ContextLogic Inc. v. no / lar frank
Claim Number: FA2304002038816
Complainant is ContextLogic Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is no / lar frank (“Respondent”), Manila, Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wish-sp.com>, registered with NameSilo, 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 April 4, 2023; Forum received payment on April 4, 2023.
On April 5, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <wish-sp.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@wish-sp.com. Also on April 6, 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 May 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
On May 3, 2023, the Panel issued Procedural Order No. 1, requesting pursuant to Policy Rule 12, Complainant to provide on or before May 8, 2023, additional information being a certified translation of the screen capture of the website to which it alleged the disputed domain name resolves; and allowing Respondent to make submissions on the Complainant’s said additional information within two (2) working days of the date on which it is timely served with said additional information.
On May 6, 2023, Respondent requested a two week extension of time to provide said certified translation.
On May 7, 2023, the Panel issued Procedural Order No. 2, refusing Complainant’s said application for a two week extension of time but instead allowed a two (2) day extension of time, directing that, Complainant provide said certified translation on or before Wednesday May 10, 2023; and allowing Respondent to make submissions on the Complainant’s said additional information within two (2) working days of the date on which it is timely served with said additional information.
On May 9, 2023, Complainant timely furnished said additional information as directed and no timely submissions were received from Respondent.
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 claims rights in the WISH trademark and service mark established by its ownership of the portfolio registrations described below and its use of the mark on its well-known e-commerce platform at <www.wish.com> and accessible as a mobile application, since at least as early as 2011.
Complainant claims to have approximately 23 million monthly active users and its mobile app has millions of customer reviews, including over 14,000,000 reviews on Google Play and over 2 million ratings on the Apple App Store.
Complainant alleges that the disputed domain name <wish-sp.com> is identical and confusingly similar to Complainant’s WISH mark because it contains the WISH mark in its entirety. Complainant adds that the WISH mark is the dominant and primary portion of the disputed domain name.
It is submitted that the only difference between the disputed domain name and Complainant’s WISH mark is the addition of a hyphen, the generic term “SP” together with the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant argues that the mere addition of the hyphen, the generic term “SP”, and the gTLD extension are insufficient to differentiate the disputed domain name from the WISH mark in which Complainant has rights.
The Complainant submits that panels established under the Policy have regularly found that similar changes to a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). Specifically, the panel in ContextLogic Inc. v. Chen Gang, FA2302002030841 (Forum Mar. 14, 2023) has very recently found that a similarly situated domain name, <wish-l.com>, was confusingly similar to Complainant’s WISH mark.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name because there is no evidence that Respondent has, as an individual, business, or other organization, been commonly known as <wish-sp.com>.
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by the <cigaraficionada.com> domain name and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
Complainant contends that the published WHOIS information for the disputed domain name registration does not identify Respondent’s name, thus keeping Respondent’s identity private, and argues that this fact alone is evidence that the Respondent has no rights or legitimate interests in the disputed domain name. see Save On Energy, LLC v. Joseph Crono, FA 1496896 (Forum June 17, 2013) (stating "[t]he fact that Respondent registered the domain name using a privacy service to conceal his identity is by itself evidence that Respondent has no rights or legitimate interests.").
Complainant further argues that Respondent’s lack of rights or legitimate interests in the disputed domain name is also demonstrated by the fact that Respondent is not associated with Complainant and Complainant has not licensed or otherwise authorized Respondent’s use of the WISH mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (finding the respondent lacked rights and interest in the domain at issue because the respondent was not commonly known by the domain and the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
It is further argued that the disputed domain name was registered by Respondent on February 24, 2023, more than 11 years after Complainant first used the WISH mark, notwithstanding Complainant’s prior common law and registered rights to the WISH marks. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; and (3) the respondent is not commonly known by the domain name in question).
Referring to a screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, Complainant submits that Respondent is using the disputed domain name in connection with a website that prominently shows Complainant’s logo and purports to be a login screen for Complainant’s services.
Complainant submits that it appears that when a consumer provides login information for the website to which the disputed domain name resolves, they are providing personal information to Respondent directly, who may then use the information to defraud and scam unsuspecting customers.
Complainant next alleges that Respondent registered and is using the disputed domain name in bad faith because the disputed domain name is identical and/or confusingly similar to Complainant’s WISH mark; Respondent had constructive and actual, notice of Complainant’s rights to the WISH mark prior to registering the disputed domain name; and Respondent is using the disputed domain name in connection with a website that displays Complainant’s registered trademark and appears to be intentionally created to deceive consumers.
Complainant argues that prior decisions of panels established under the Policy have held that a respondent’s bad faith may be inferred from the registration of a domain that includes a well-known mark. See The Caravan Club v. Mrgsale, FA7000095314 (Forum Aug. 30, 2000) (“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.”).
Referring to a screen capture of the website to which the disputed domain name resolves, Complainant argues that the disputed domain name, which is confusingly similar to Complainant’s well-known and registered WISH mark, was registered and is being used primarily for the purpose of deceiving consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and thereby disrupting Complainant’s business.
Complainant submits that such registration and use constitute bad faith Policy 4(b)(iii). See EthnicGrocer.com v. Latin Grocer.com FA0003000094384 (Forum July 7, 2000) (registration of slight variation of Complainant’s mark suggests Respondent registered names primarily for the purpose of disrupting Complainant’s business).
Furthermore, Complainant adds that the exhibited screen capture shows that Respondent is intentionally using Complainant’s well-known logo and trademark on the website to which the disputed domain name resolves and argues that it is inconceivable that Respondent was unaware of Complainant’s trademark when it registered the disputed domain name <wish-sp.com>.
Complainant submits that Respondent’s registration of the disputed domain name with actual or constructive knowledge of Complainant’s rights in the WISH mark is evidence that Respondent registered and is using the disputed domain name in bad faith. See Samsonite Corp. v. Colony Holding, FA0003000094313 (Forum April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of a commonly known mark at time of registration).
Addressing Respondent’s use of the disputed domain name, Complainant submits that the exhibited screen capture of the website to which the disputed domain name resolves shows that Respondent is intentionally attempting to attract Internet users to its website and gain customer information by using Complainant’s well-known mark and likeness.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner and operator of an e-commerce platform available at <www.wish.com> and is the registered owner of the following registered trademarks and service marks:
· United States registered service mark WISH, registration number 4,311,924 registered on the Principal Register on April 2, 2013, for services in international class 42;
· United States registered service mark WISH, registration number 4,340,974, registered on the Principal Register on May 28, 2013, for services in international class 35;
· United States registered trademark and service mark WISH, registration number 6,142,756, registered on the Principal Register on September 1, 2020, for goods and services in international classes 9, 38, and 42;
· United States registered trademark and service mark WISH (stylized), registration number 6,310,193 registered on the Principal Register on Mar. 30, 2021, for goods and services in international classes 9, 38, and 42.
· United States registered service mark WISH LOCAL, registration number 6,051,493 registered on the Principal Register on May 12, 2020 for goods and services in international classes 35, 39;
· United States registered service mark WISH PICKUP, registration number 6,099,348 registered on the Principal Register on July 14,, 2020 for goods and services in international classes 35, 39;
· United States registered trademark WISH, registration number 4,921,074, registered on the Principal Register on March 22, 2016, for goods in international class 9;
· United States registered service mark WISHPOST, registration number 6,497,764 registered on the Principal Register on Sep. 28, 2021 for goods and services in international classes 35, 39;
· United States registered service mark WISHPOST (stylized), registration number 6,497,766 registered on the Principal Register on Sep. 28, 2021 for goods and services in international classes 35, 39.
The disputed domain name <wish-sp.com> was registered on February 24, 2023 and resolves to a log-on page with very basic generic graphics suggesting high-rise buildings and a log-in form with a number of fields. The text on the page is primarily in non-latin script.
There is no information available about Respondent, except for that provided in the Complaint, as amended, the information available on the Registrar’s WhoIs, and in the details of the registration of the disputed domain name 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.
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 WISH mark, established by the ownership of the portfolio of trademark registrations described above. Furthermore Complainant has established common law rights in the mark through extensive use on its Internet platform and mobile applications.
The disputed domain name <wish-sp.com> consists of Complainant’s WISH mark in its entirety in combination with a hyphen, the letters “sp” and the gTLD <.com>.
Complainant’s WISH mark is the initial, dominant and only distinctive element in the disputed domain name. The hyphens add no distinguishing character to the disputed domain name, but separates the WISH mark from the other elements and thereby add emphasis to the Complainant’s mark.
When placed in a domain name where the dominant element is Complainant’s WISH mark, the letters “sp” appear to have no obvious meaning, and none is suggested by Complainant.
Neither the hyphen nor the letters “sp” in the disputed domain name therefore prevent a finding that the disputed domain name is confusingly similar to Complainant’s WISH mark.
Similarly, the gTLD extension <.com> 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 the WISH mark, and 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 has never been known or referred to as WISH or any variation thereof;
· there is no evidence that Respondent has, as an individual, business, or other organization, been commonly as <wish-sp.com>;
· the published WHOIS information for the disputed domain name registration does not identify Respondent’s name, thus keeping Respondent’s identity private;
· Respondent is not associated with Complainant and Complainant has not licensed or otherwise authorized Respondent’s use of the WISH mark;
· the disputed domain name was registered years after Complainant first used the WISH mark, notwithstanding Complainant’s prior common law and registered rights to the WISH marks;
· the screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, shows that Respondent is using the disputed domain name in connection with a website that prominently shows Complainant’s logo and purports to be a login screen for Complainant’s services;
· it appears that when a consumer provides login information for Complainant’s website to which the disputed domain name resolves, they are providing personal information to Respondent directly, who may then use the information to defraud and scam unsuspecting customers;
· such use is clearly meant to trade upon the goodwill of Complainant and deceive the relevant consuming public;
· Respondent is thereby directing Complainant’s merchants to Respondent’s infringing website and such use is not 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);
· Respondent’s use of the disputed domain name that is identical or confusingly similar to the WISH marks to attract Internet users to Respondent’s commercial website for Respondent’s benefit, does not qualify as either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
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 trademark and service mark rights in the WISH mark which predate the registration and first use of the disputed domain name on February 24, 2023.
Given the extent of the reputation of the Complainant’s WISH mark, it is most improbable that the disputed domain name which is composed of only the WISH mark as its initial, dominant and only distinctive character, was registered without actual knowledge of Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind in order to take predatory advantage of Complainant, its WISH mark, rights, goodwill and reputation.
The uncontested evidence also shows that Respondent has been using the disputed domain name to resolve to a website which purports to grant entry to Complainant’s WISH website. This is a false promise as Complainant has no business relationship with Complainant.
The exhibited screen capture shows that the disputed domain name resolves to a log-on page with very basic graphics suggesting high-rise buildings and a log-in form with a number of fields. The text on the page is primarily in non-latin script. At the request of the Panel, Complainant furnished a certified translation of the text which states: “wish Cross-Border Mall System”, “Business Management System Welcome to the mall business management system”, “WISH©2023” and “Document title: Business Management –“, together with four logon-fields populated with the following statements inviting activity by the Internet visitor. “Please enter a user name”, “Please enter the password”, “Please enter the verification code”, and “Log in”.
Such requests for login information from unsuspecting Internet users, in circumstances where Respondent is intentionally using the WISH mark in the disputed domain name to attract, confuse, and lure Internet traffic intended for Complainant, and its own website, is a cause of great concern that unsuspecting Internet users are being misled into divulging their personal data to Respondent.
This Panel finds therefore that by using the domain name in this manner, Respondent is on the balance of probabilities engaged in phishing and is using the disputed domain name within the website address, in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location.
Respondent is therefore using the disputed domain name in bad faith.
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 <wish-sp.com> domain name be TRANSFERRED from Respondent to Complainant
James Bridgeman SC
Panelist
Dated: May 12, 2023
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