David L. Osment v. Guiying Liu
Claim Number: FA2302002030488
Complainant is David L. Osment (“Complainant”), represented by Colin W. Turner of Stinson LLP, Missouri. Respondent is Guiying Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newwoodlandscenics.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on February 3, 2023; Forum received payment on February 3, 2023.
On February 10, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <newwoodlandscenics.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. 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 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@newwoodlandscenics.com. Also on February 15, 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 14, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, 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
Complainant, David L. Osment, through its licensee, and their predecessors, offers hobby crafts products including scale buildings, vehicles, and other scenery pieces for model railroads, architectural layouts, dioramas, gaming, military models, miniatures, and more. Complainant has rights in the trademarks WOODLAND and WOODLAND SCENICS through its longstanding use in commerce as well as registration of such marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,827,179, registered on August 3, 2010). Respondent’s <newwoodlandscenics.com> domain name is identical or confusingly similar to Complainant’s marks as it incorporates the marks in their entirety and adds the generic or descriptive term “new” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <newwoodlandscenics.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its WOODLAND or WOODLAND SCENICS marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use, but instead diverts consumers while either fraudulently harvesting personal and account information or selling counterfeit products.
Respondent registered and uses the <newwoodlandscenics.com> domain name in bad faith. Respondent attracts users for commercial gain based on confusion with Complainant’s marks. Additionally, Respondent either engages in fraud or offers counterfeit items for sale. Furthermore, Respondent had actual knowledge of Complainant’s rights in the WOODLAND and WOODLAND SCENICS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated its ownership of rights in the WOODLAND and WOODLAND SCENICS trademarks and the <newwoodlandscenics.com> domain name is confusingly similar to such marks;
- Respondent is not commonly known by the disputed domain name and it uses the domain name to either harvest personal and account information from users who visit its website or it is selling counterfeit products under Complainant’s mark; and
- Respondent’s above-mentioned activity indicates that it is seeking commercial gain based on a likelihood of confusion with Complainant’s mark and thus that it has registered and uses the disputed domain name in bad faith.
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”).
Preliminary Issue – Language of the Proceedings
The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and determine that English be the language of the proceedings. In support of its request, Complainant states that “that Respondent is capable of understanding English for at least the following reasons. Respondent registered the newwoodlandscenics.com domain name, which contains English letters, and all of the content on the website associated with the newwoodlandscenics.com domain name is in English. Furthermore, there is no Chinese language on the website associate with newwoodlandscenics.com, nor any mention of China or an address based in China. Additionally, the addresses found on the Contact Us and Privacy Policy pages are located in Ohio and North Carolina and the terms and conditions for the website require that disputes be arbitrated, commenced or prosecuted in Portland, Oregon..” The Panel notes Complainant’s submission of screenshots of Respondent’s website and these do support its above-mentioned statements. Finally, the Forum has provided notice of these proceedings to the Respondent in both Chinese and English, yet the Respondent has not provided a Response or made any other submission in this case. In Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO Oct. 15, 2008) the Panel held that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”. In light of the fact that the disputed domain name is made up of English words and that Respondent’s website displays content that is entirely in English and mentions US-based addresses, and also taking into account the delay and further expense that would be caused from requiring that Complainant to submit documents in Chinese, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.
Complainant asserts rights in the WOODLAND and WOODLAND SCENICS mark through its registration with the USPTO. Under Policy ¶ 4(a)(i), registration with the USPTO is generally sufficient to establish rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Since Complainant has submitted copies of its registration certificates,, the Panel finds that Complainant has rights in the claimed marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <newwoodlandscenics.com> domain name is identical or confusingly similar to the WOODLAND and WOODLAND SCENICS marks. Under Policy ¶ 4(a)(i), adding a generic or descriptive term to a mark, along with the “.com” gTLD, is typically insufficient to differentiate a disputed domain name from the mark. See e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The <newwoodlandscenics.com> domain name incorporates the WOODLAND and WOODLAND SCENICS marks in their entirety and adds the generic or descriptive term “new” along with the “.com” gTLD. As such, the Panel finds that Respondent’s domain name is identical or confusingly similar to Complainant’s marks 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 is not commonly known by the <newwoodlandscenics.com> domain name, nor has Complainant authorized or licensed Respondent to use its WOODLAND and WOODLAND SCENICS marks in the disputed domain name. Under Policy ¶ 4(c)(ii) relevant WHOIS information may be consulted when determining whether a Respondent is commonly known by a disputed domain name. See Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). 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 Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”) Here, the WHOIS information disclosed in the Registrar verification identifies Respondent as “Guiying Liu” and there is no evidence that Respondent is known otherwise or that it has permission to use Complainant’s marks. Thus, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent is not using the <newwoodlandscenics.com> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use as it either seeks to fraudulently collect users’ personal and account information or sell counterfeit products. Under Policy ¶¶ 4(c)(i) and (iii), diverting users for fraud or the sale of counterfeit goods is not a bona fide offering of goods or services, nor does it constitute a noncommercial or fair use. See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods 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). Complainant provides screenshots of the <newwoodlandscenics.com> website which uses Complainant’s logo, product images and packages as well as its product names, much of which appears to have been copied from the legitimate website of Complainant’s licensee. These screenshots also show that Respondent either fraudulently seeks payment and personal information from users or is selling counterfeit items of Complainant’s at significantly reduced prices. Respondent has not filed a response or made any other submission in this case and so it does not dispute Complainant’s assertions or evidence. Thus, the Panel finds, by a preponderance of the presented evidence, that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor is it making a noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent registered the <newwoodlandscenics.com> domain name with actual knowledge of Complainant’s rights in the WOODLAND and WOODLAND SCENICS marks. Under Policy ¶ 4(a)(iii), actual notice of a complainant’s mark can indicate bad faith registration of a domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Actual knowledge can be demonstrated by a respondent’s use of a disputed domain name, in particular, where it attempts to pass itself off as a complainant while displaying asserted mark, logo, and products. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The submitted screenshots of Respondent’s webpage display Complainant’s mark, logo, products, and product images thus making it a near certainty that Respondent had actual knowledge of Complainant’s rights in the WOODLAND and WOODLAND SCENICS marks at the time that it registered the <newwoodlandscenics.com> domain name.
Next, Complainant asserts that Respondent registered and uses the <newwoodlandscenics.com> domain name in bad faith by attracting users, through a likelihood of confusion and for commercial gain, to either commit fraud or sell counterfeit items. Under Policy ¶ 4(b)(iv), attracting users to respondent’s website for its own commercial gain is evidence of bad faith registration and use. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”) See also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant’s assertion that Respondent’s webpage either fraudulently seeks payment and personal information from users or offers counterfeit items for sale at discount prices while displaying Complainant’s logo, product images, packaging, and product names is not unreasonable in light of the evidence presented. As Respondent has not participated in this case to provide an alternate explanation for its actions, the Panel finds that the submitted evidence strongly leads to the conclusion that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newwoodlandscenics.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 17, 2023
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