Apex Brands, Inc. v. Yhikds Yhikds / Yilun Cheng
Claim Number: FA2301002028889
Complainant is Apex Brands, Inc. (“Complainant”), USA, represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona. Respondent is Yhikds Yhikds / Yilun Cheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gearwrenchtools.store> and <toolsgearwrench.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 24, 2023; Forum received payment on January 24, 2023.
On January 26, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <gearwrenchtools.store> and <toolsgearwrench.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. 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 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@gearwrenchtools.store, postmaster@toolsgearwrench.com. Also on January 30, 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 28, 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.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the disputed domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names were registered within a two-month period, using the same registrar, and utilizing the same Internet service provider. Moreover, the disputed domain names resolve to nearly identical websites that purport to pass Respondent off as Complainant by displaying Complainant’s mark, logo, and product photos.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus between the two respondents, and thus it determines that the disputed domain names are commonly owned/controlled by a single respondent who is using multiple aliases. The two Respondents will be collectively referred to as “Respondent.”
A. Complainant
i) Complainant, Apex Brands, Inc., is a manufacturer of hand tools. Complainant has rights in the GEARWRENCH mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,177,880 registered July 24, 2012). The disputed domain names are virtually identical and confusingly similar to Complainant’s mark because each one incorporates the GEARWRENCH mark in its entirety and adds the term “tools” and either the “.com” or “.store” generic top-level domain (“gTLD”).
ii) Respondent has no legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent any rights in the GEARWRENCH mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to websites that display Complainant’s products to pass Respondent off as Complainant.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain names in order to pass off as affiliated with Complainant and divert customers for commercial gain. Respondent made use of a privacy service. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the GEARWRENCH mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The <gearwrenchtools.store> domain name was registered on August 11, 2022 and the <toolsgearwrench.com> domain name was registered on October 11, 2022.
2. Complainant has established rights in the GEARWRENCH mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,177,880 registered July 24, 2012).
3. The disputed domain names’ resolving websites (i) use Complainant’s GW GEARWRENCH logo and graphics; (ii) use Complainant’s GW logo as the website’s favicon; (iii) mimic Complainant’s website’s coloring, photos and overall look and feel; (iv) display GW GEARWRENCH graphics from Complainant’s recent sweepstakes campaign; and (v) directly copy promotional and marketing photos taken from Complainant’s Amazon product pages.
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 asserts rights in the GEARWRENCH mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 4,177,880 registered July 24, 2012). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the GEARWRENCH mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).
Complainant argues the disputed domain names are identical or confusingly similar to Complainant’s GEARWRENCH mark. The addition of a gTLD and a descriptive term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes that each of the disputed domain names <gearwrenchtools.store> and <toolsgearwrench.com> incorporates the GEARWRENCH mark in its entirety while adding the descriptive term “tools” and the “.com” or “.store” gTLD. Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per 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 contends that Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain names lists the registrant as “Yhikds Yhikds / Yilun Cheng.” Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s GEARWRENCH mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent purports to be Complainant through its use of a fraudulent webpage bearing Complainant’s logo and copyrighted photos. An attempt by a respondent to pass itself off as an affiliate of a complainant under false pretenses may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 has provided evidence of similarities between the websites of the disputed domain names and Complainant, including Respondent’s use of Complainant’s copyrighted logo and product photos. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (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 names.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because the disputed domain names incorporate the GEARWRENCH mark to pass Respondent off as Complainant through the use of a fraudulent webpage. Use of a disputed domain name to imitate a complainant’s website can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See 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.”). see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website).
Complainant has provided evidence that Respondent (i) uses Complainant’s GW GEARWRENCH logo and graphics; (ii) uses Complainant’s GW logo as the website’s favicon; (iii) mimics Complainant’s website’s coloring, photos and overall look and feel; (iv) displays GW GEARWRENCH graphics from Complainant’s recent sweepstakes campaign; and (v) directly copies promotional and marketing photos taken from Complainant’s Amazon product pages. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Complainant further contends that Respondent had actual knowledge of Complainant's rights in the GEARWRENCH mark. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant’s rights in the GEARWRENCH mark at the time of its registering the disputed domain names, and finds that Respondent registered the disputed domains 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 <gearwrenchtools.store> and <toolsgearwrench.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 1, 2023
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