ASSOS of Switzerland GmbH v. Mingming Guan
Claim Number: FA2301002027946
Complainant is ASSOS of Switzerland GmbH (“Complainant”), represented by David Ewen of Shipman & Goodwin, LLP, USA. Respondent is Mingming Guan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assosclothing.com>, registered with Name.com, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 17, 2023; Forum received payment on January 17, 2023.
On January 19, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <assosclothing.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@assosclothing.com. Also on January 20, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant,
ASSOS of Switzerland GmbH is in the cycling apparel business. Complainant has rights
in the ASSOS mark based upon registration with the United States Patent and
Trademark Office (“USPTO”) (e.g., Reg. No. 2,648,797, registered
November 12, 2002). The disputed domain name is confusingly similar to
Complainant’s ASSOS trademark because it incorporates the mark in its entirety
and adds the generic word “clothing” and the generic top-level domain name
(“gTLD”) “.com”.
ii) Respondent
does not have rights or legitimate interests in the disputed domain
name. Respondent is not licensed or authorized to use Complainant’s ASSOS mark
and is not commonly known by the disputed domain name. Respondent also does not
use the disputed domain name for any bona fide offering of goods or
services or legitimate noncommercial or fair use. Rather, Respondent attempts
passing off as Complainant to offer Complainant’s products for sale.
iii) Respondent
registered and uses the disputed domain name in bad faith. Respondent
offers counterfeit or competing products for commercial gain. Respondent may be
phishing for Internet user’s personal and financial information. Respondent had
actual knowledge of Complainant’s rights in the ASSOS mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on October 6, 2022.
2. Complainant has established rights in the ASSOS mark based upon registration with the USPTO (e.g., Reg. No. 2,648,797, registered November 12, 2002).
3. The disputed domain name’s resolving website mimics the look and feel of Complainant’s official website and offers counterfeit or competing products at a steeply discounted rate.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the ASSOS mark based upon registration with the USPTO (e.g., Reg. No. 2,648,797, registered November 12, 2002) and other trademark agencies. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the ASSOS mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <assosclothing.com> is confusingly similar to Complainant’s ASSOS trademark because it incorporates the mark in its entirety and adds the generic word “clothing” and the gTLD “.com”. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s ASSOS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not licensed or authorized to use Complainant’s ASSOS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The unmasked WHOIS information for the disputed domain name lists the registrant as “Mingming Guan.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts passing off as Complainant to offer Complainant’s products for sale. Replicating complainant’s website and displaying complainant’s products is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of both its website and the disputed domain name’s resolving webpage, showing Respondent’s use of Complainant’s mark and offerings of ASSOS-branded products at a steeply discounted rate. The Panel thus finds Respondent does not provide a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent offers counterfeit or competing products for commercial gain. The disputed domain name has been used in connection with a close copy or clone of Complainant’s official website to purportedly sell ASSOS-branded products. Respondent’s use of Complainant’s marks, as well as its mimicking of the look and feel of Complainant’s official website is designed to create the false appearance of affiliation, endorsement, and/or sponsorship with/by Complainant and dupe unsuspecting consumers. Furthermore, Complainant notes that the website located at the disputed domain name purports to offer ASSOS-branded products at steep discounts, suggesting that Respondent is either selling counterfeit products, or merely phishing for credit card information from consumers.
Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant has provided screenshots of the disputed domain name's resolving website as well as Complainant’s website to show the disputed domain name’s resolving website mimicking the look and feel of Complainant’s official website and offering counterfeit or competing products for sales. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further contends Respondent had actual knowledge of Complainant’s rights in the ASSOS mark because of Respondent’s use of the mark and offerings of for sale. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel again recalls Complainant provides screenshots of both its website and the disputed domain name’s resolving webpage, showing Respondent’s use of Complainant’s mark and offerings of ASSOS-branded products at a deeply discounted rate. The Panel infers, due to the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the Complainant’s ASSOS mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <assosclothing.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 16, 2023
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