Apex Brands, Inc. v. jinfeng yuan
Claim Number: FA2301002027952
Complainant is Apex Brands, Inc. (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is jinfeng yuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gearwrenchts.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.
Paul M. DeCicco, 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 <gearwrenchts.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 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@gearwrenchts.com. Also on January 23, 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 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Apex Brands, Inc. is in the hand tools business.
Complainant asserts rights in the GEARWRENCH mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) as well as with other trademark registrars worldwide.
Respondent’s <gearwrenchts.com> is confusingly similar to Complainant’s GEARWRENCH trademark because it incorporates the mark in its entirety and merely adds the letters “ts” and the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <gearwrenchts.com> domain name. Respondent is not licensed or authorized to use Complainant’s GEARWRENCH mark and is not commonly known by the domain name. Respondent also does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent offers Complainant’s goods or competing goods for sale.
Respondent registered and uses the <gearwrenchts.com>
domain name in bad faith. Respondent
creates a likelihood of confusion with Complainant by offering its products for
commercial gain. Respondent had actual knowledge of Complainant’s rights in the GEARWRENCH mark
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the GEARWRENCH mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the GEARWRENCH trademark.
Respondent uses the at-issue domain name to address a website that offers tools for sale that compete with tools that Complainant offers under its GEARWRENCH trademark.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the GEARWRENCH mark with one or more bona fide trademark registrars demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s <gearwrenchts.com> domain name contains Complainant’s entire GEARWRENCH trademark followed by the letter “ts” and with all followed by the “.com” top-level domain name. The differences between Complainant’s trademark and Respondent’s at-issue domain name fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <gearwrenchts.com> domain name is confusingly similar to Complainant’s GEARWRENCH trademark. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <gearwrenchts.com> 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 legitimate interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name reveals that the domain name’s registrant is “jinfeng yuan” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <gearwrenchts.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to address a website that displays Complainant trademark and stylized logo and there offers Complainant’s products, or other products that compete with Complainant’s products, at discount rates. Respondent’s use of <gearwrenchts.com> indicates neither a bona fide offering of goods or services, nor any legitimate non-commercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or services, or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <gearwrenchts.com> domain name was registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain name to pass itself off as Complainant and fool internet users into falsely believing that the domain name and its associated website are sponsored by Complainant. The website purports to offer tools that compete with Complainant’s offering under the GEARWRENCH mark. Respondent thus capitalizes on the confusion it created and commercially benefits. Respondent’s use of the domain name and its associated website in this manner shows Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) and otherwise. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Moreover, Respondent had actual knowledge of Complainant’s rights in the GEARWRENCH mark when it registered <gearwrenchts.com> as a domain name. Respondent’s actual knowledge of Complainant’s trademark is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to offer counterfeit or unauthorized GEARWRENCH products as discussed elsewhere herein. Registering and using the confusingly similar domain name with knowledge of Complainant’s rights in GEARWRENCH further shows Respondent’s bad faith registration and use of <gearwrenchts.com> under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gearwrenchts.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 21, 2023
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