Winsome Trading, Inc. v. Chang Qiu
Claim Number: FA2303002038008
Complainant is Winsome Trading, Inc. (“Complainant”), represented by Russell C. Pangborn, Washington, USA. Respondent is Chang Qiu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <winsomewood.shop>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on March 29, 2023; Forum received payment on March 29, 2023.
On March 30, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <winsomewood.shop> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@winsomewood.shop. Also on April 5, 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 April 28, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant refers to copies of the registration certificates for the registered trademarks described below and a screen capture of Complainant’s own website to which its domain name <winsomewood.com> resolves as evidence of its rights in, ownership of, and use of, the WINSOME and WINSOME WOOD marks.
Complainant submits that it has been offering its wood furniture products in interstate commerce in connection with its WINSOME and WINSOME WOOD marks since at least as early as February of 2008. In this regard, Complainant refers to the Whois record for its <winsomewood.com> domain name which shows that it was registered on February 11, 2008.
Complainant submits consumers recognize the WINSOME mark as being indicative of its high-quality products, and show that Complainant’s goods are from a trusted source.
Complainant submits that the disputed domain name <winsomewood.shop> domain name is substantially identical to, and is confusingly similar to, the WINSOME and WINSOME WOOD marks because it incorporated each of the marks in its entirety.
Complainant adds that the inclusion of the generic Top-Level Domain (“gTLD”) extension <.shop> does nothing to distinguish the disputed domain name from the Complainant's WINSOME and WINSOME WOOD marks. See Paul Loebach v. Nanci Nette, Forum Claim No. FA2302002031225 (Mar. 22, 2023) (finding domain name <paulloebach.com> to be identical to complainant’s PAUL LOEBACH mark because “[the] inconsequential generic top-level domain (“gTLD”) ‘.com’ may be ignored”).
Complainant next alleges that Respondent no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by Complainant’s WINSOME and WINSOME WOOD Marks or affiliated with Complainant in any way.
Complainant adds that Respondent is not a licensee of Complainant, and that Complainant has not granted any authorization for Respondent to make use of its WINSOME and WINSOME WOOD marks in the disputed domain name or in any other context.
It is further contended that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather uses the disputed domain name to replicate elements of Complainant’s website and to advertise the sale of identical furniture. See Abbott Laboratories v. Domain Admin / Whoisprotection.cc Forum Claim Number: FA2005001895340 (June 4, 2020) (“Use of a complainant’s mark to attract traffic and revenue is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii)).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Complainant has an established a reputation in the WINSOME and WINSOME WOOD marks which are used to distinguish its fine wood furniture and housewares. The marks were first used by Complainant in connection with its goods since as early as 1991, whereas the disputed domain name was not registered until May of 2022.
Complainant contends that the disputed domain name <winsomewood.shop> substantively comprises Complainant’s WINSOME and WINSOME WOOD marks in their entirety, and the registration of the disputed domain name is a deliberate attempt to be confusingly similar to Complainant’s marks as well as Complainant’s previously registered domain name <winsomewood.com> which Complainant uses as the address of its own website to direct consumers to information about its wood furniture business.
Complainant alleges that Respondent has deliberately chosen and registered the disputed domain name <winsomewood.shop> with knowledge of Complainant, its preexisting rights in the use of the WINSOME name and mark in connection with online furniture distribution.
Given the facts presented herein, Complainant submits that Respondent has no reason to register and use the disputed domain name which features Complainant’s WINSOME and WINSOME WOOD marks other than for the bad faith purpose of trading off Complainant’s goodwill in the WINSOME mark—of which Respondent was fully aware—in order to divert consumers to its website.
Respondent’s registration and use of Complainant’s WINSOME and WINSOME WOOD Marks in the <winsomewood.shop> domain name and on the resolving website for use in connection with identical goods and services shows a clear intent to trade off the goodwill Complainant has built in its WINSOME and WINSOME WOOD marks and take advantage of consumers who have learned to associate the WINSOME and WINSOME WOOD Marks with Complainant’s trusted and high-quality furniture business.
Complainant again refers to the exhibited screen capture of the website to which the disputed domain name resolves, and submits that it virtually replicates the look of Complainant’s own website at <www.winsomewood.com>, down to the copying of the stylization and color of the WINSOME logo appearing on the landing page.
Complainant concludes that given the virtual replication of Complainant’s website by Respondent, consumers are likely to be confused when they search for, or encounter the disputed domain name. Complainant adds that consumers are likely to expect Respondent’s website to be associated with Complainant and to mistakenly believe Respondents goods are stemming from, associated with, or otherwise sponsored by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and uses the WINSOME WOOD and WINSOME trademarks for which it owns the following registrations in the United States of America:
· United States registered trademark mark WINSOME, registration number 4631909, registered on the Principal Register on November 4, 2014 for goods in international class 20; and
· United States registered trademark mark WINSOME WOOD , registration number 5359288, registered on the Principal Register on December 19, 2017, for goods in international class 20.
Complainant has an established Internet presence and owns the domain name <winsomewood.com> which it uses as the address of its website.
The disputed domain name <winsomewood.shop> was registered on May 6, 2022 and resolves to a website that offers furniture and homewear that directly competes with product offered by Complainant, and having the look and feel of Complainant’s own website at <www.winsomewood.com>.
There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding. Respondent’s identity was concealed on the published WhoIs but the Registrar disclosed, in response to the Forum’s request, that Respondent is the registrant.
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 has provided convincing, uncontested evidence that it has rights in the WINSOME and WINSOME WOOD marks, established by its ownership of the portfolio of trademark registrations described above.
Furthermore the Complainant’s uncontested evidence is that the marks have long been extensively used by Complainant in its furniture and homeware business, including on Complainant’s own website at <www.winsomewood.com>.
The disputed domain name <winsomewood.shop> consists of each of Complainant’s WINSOME and WINSOME WOOD marks in its entirety in combination with the gTLD extension <.shop>.
Similarly, the gTLD extension <.shop> does not prevent a finding of confusing similarity because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to both the WINSOME and WINSOME WOOD marks. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by Complainant’s WINSOME and WINSOME WOOD marks;
· Respondent is not affiliated with Complainant in any way;
· Respondent is not a licensee of Complainant;
· Complainant has not granted any authorization for the Respondent to make use of its WINSOME and WINSOME WOOD marks in the disputed domain name or in any other context;
· The screen captures of Complainant’s own pre-existing website at <www.winsomewood.com> and the website to which the disputed domain name resolves shows that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather, is using the disputed domain name and the website to which it resolves to confuse Internet users by offering goods which compete directly with those offered by Complainant;
· The exhibited screen captures, replicate elements of Complainant’s website, advertising the sale of identical furniture.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has established rights in the WINSOME and WINSOME WOOD marks established by the trademark registrations described above which predate the registration and first use of the disputed domain name on May 6, 2022.
The disputed domain name is composed of the WINSOME and WINSOME WOOD marks and no other elements except for the gTLD extension.
It is improbable that the combination of the elements “winsome” and “wood” was chosen and registered without knowledge of Complainant, its marks, name and business.
This Panel finds therefore that on the balance of probabilities the registrant chose and registered the disputed domain name in bad faith in order to take predatory advantage of Complainant’s reputation and goodwill in the marks with the intention of using the disputed domain name to create confusion among Internet users.
The uncontested evidence is that Respondent is using the disputed domain name to resolve to a website that purports to offer furniture and homeware products that are identical to those of Complainant. Respondent’s website adopts the look and feel of Complainant’s pre-existing website at <www.winsome.com>.
Respondent’s intention is clearly to attract and confuse Internet users and misdirect and divert their Internet traffic to Respondent’s website, in an endeavor to pass of the goods offered by Respondent as those of Complainant.
This Panel finds therefore that by using the disputed domain name in bad faith as the address of the website which purports pass off Respondent’s goods as those of Complainant, Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and products presented on Respondent’s web site.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <winsomewood.shop> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 1, 2023
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