Apex Brands, Inc. v. lu xin / Fu Chao
Claim Number: FA2301002029518
Complainant is Apex Brands, Inc. (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, USA. Respondent is lu xin / Fu Chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gearwrenchdeals.com>, <gearwrench-sale.com>, registered with Gname.com Pte. Ltd..
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 27, 2023; Forum received payment on January 27, 2023.
On Feb 07, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <gearwrenchdeals.com>, <gearwrench-sale.com> domain names are registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 February 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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@gearwrenchdeals.com, postmaster@gearwrench-sale.com. Also on February 10, 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 March 9, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case including Respondent’s failure to respond or otherwise object to moving forward in English, the Panel finds that the proceeding should be in English.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person or entity operating under two different aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
The two at-issue domain names were registered using the same registrar within three days of each other, and with the same privacy service. They both use the same Internet Service Provider. Each at-issue domain names includes Complainant’s entire trademark and a suggestive generic term, “sale” or “deal,” and has “.com” as a top-level. Additionally, webpages addressed by the at-issue domain names have several obvious similarities related to their content and format. There are other points of similarity as well. While it is possible that the domain names’ underlying registrants may or may not differ in their relevant WHOIS data, the at-issue domain names nevertheless appear to be related to, or controlled by, the same person, persons, or entity. The array of similar characteristics between the domain names is telling and Complainant’s contention that the domain names should be treated as a single entity is unopposed. Therefore, the Panel will treat the nominal respondents (herein referred to collectively as Respondent) as if a single respondent for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant Apex Brands, Inc. designs, manufacturers, and sells hand and power tools.
Complainant has rights in the GEARWRENCH mark through numerous trademark registrations internationally, including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s domain names are confusingly similar to the GEARWRENCH mark as they include the entire mark while merely adding a generic term, a generic top-level domain (“gTLD”), and, in one domain name, a hyphen. Further, the domain names resolve to websites selling products identical to those offered by Complainant.
Respondent lacks rights or legitimate interests in the at-issue domain names since Respondent is not licensed or authorized to use Complainant’s GEARWRENCH mark and is not commonly known by the at-issue domain names. Additionally, Respondent does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is diverting Internet traffic to sites which advertise and offer competing goods for sale and/or Complainant’s genuine goods for sale without authorization. Further, Complainant registered the GEARWRENCH mark and acquired a reputation in the mark over twenty years before Respondent registered the at-issue domain names. As such, Respondent also had actual knowledge of Complainant’s rights in the mark.
Respondent registered and uses the at-issue domain names in bad faith. First, Respondent intends to cause confusion as to the source or affiliation of the resolving websites and purports to sell competing goods in order to attract users for commercial gain. Further, the GEARWRENCH mark is well-known and Complainant has never authorized Respondent to use the mark. Lastly, Respondent registered the at-issue domain names with a privacy service and with 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 names after Complainant acquired rights in the GEARWRENCH trademark.
Respondent uses the at-issue domain names to address websites 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 names are each 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 <gearwrenchdeals.com> and <gearwrench-sale.com> domain names each contains Complainant’s entire GEARWRENCH trademark followed by the term “deals” or “sale” with one domain name containing a hyphen. Each domain name concludes with the “.com” top-level domain name. The differences between Complainant’s trademark and Respondent’s at-issue domain names fail to distinguish either domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <gearwrenchdeals.com> and <gearwrench-sale.com> domain names are each confusingly similar to Complainant’s GEARWRENCH trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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 each of the <gearwrenchdeals.com> and <gearwrench-sale.com> domain names. 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 names reveals that the domain names’ nominal registrants are respectively “lu in” and “Fu Chao” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by either <gearwrenchdeals.com> or <gearwrench-sale.com>. The Panel therefore concludes that Respondent is not commonly known by either 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 names to address websites that display Complainant trademark and there offers Complainant’s products, and/or other products that compete with Complainant. Respondent’s use of <gearwrenchdeals.com> and <gearwrench-sale.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); see also, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <gearwrenchdeals.com> and <gearwrench-sale.com> domain names were each 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 regarding both domain names pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain names to deceive internet users into falsely believing that the domain names and their associated website are sponsored by Complainant. The relevant websites displays Complainant’s mark and purport to offer tools that compete with Complainant’s offering under its GEARWRENCH mark. Respondent thus capitalizes on the confusion it created to commercially benefit. Respondent’s use of the domain names and their associated website in this manner shows Respondent’s bad faith registration and use of the domain names under Policy ¶ 4(b)(iv) and otherwise. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also, 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 <gearwrenchdeals.com> and <gearwrench-sale.com> as domain names. 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 names to offer counterfeit and/or unauthorized GEARWRENCH products as discussed elsewhere herein. Registering and using the confusingly similar domain names with knowledge of Complainant’s rights in GEARWRENCH further shows Respondent’s bad faith registration and use of both <gearwrenchdeals.com> and <gearwrench-sale.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 <gearwrenchdeals.com> and <gearwrench-sale.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 9, 2023
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