C.C. Filson Co. v. Ahdg Tbdye / Ybcbd Xhbc
Claim Number: FA2305002043189
Complainant is C.C. Filson Co. (“Complainant”), represented by Kristen McCallion of Fish & Richardson P.C., Minnesota, USA. Respondent is Ahdg Tbdye / Ybcbd Xhbc (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shopfilson.com> and <soldesfilson.com>, registered with Name.com, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 4, 2023; Forum received payment on May 4, 2023.
On May 5, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <shopfilson.com> and <soldesfilson.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 May 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@shopfilson.com, postmaster@soldesfilson.com. Also on May 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 June 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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.
A. Complainant
1. Respondent’s <shopfilson.com> and <soldesfilson.com> domain names are confusingly similar to Complainant’s FILSON mark.
2. Respondent does not have any rights or legitimate interests in the <shopfilson.com> and <soldesfilson.com> domain names.
3. Respondent registered and uses the <shopfilson.com> and <soldesfilson.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant, C.C. Filson Co., is a manufacturer and retailer of clothing, hunting and fishing products, and related accessories. Complainant holds registrations for the FILSON mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,596,953, registered on Jul. 23, 2002).
Respondent registered the <soldesfilson.com> and <shopfilson.com> domain names on July 16, 2022 and May 31, 2022 respectively, and uses them to sell counterfeit goods.
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 Panel finds that Complainant has rights in the FILSON mark through registration with multiple trademark agencies, including the USPTO. See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”)
Respondent’s <soldesfilson.com> and <shopfilson.com> domain names incorporate Complainant’s mark in its entirety and add the words “shop” or “soldes”, and the “.com” gTLD. Under Policy ¶ 4(a)(i), adding a descriptive word (albeit misspelled) and the “.com” gTLD to a disputed domain name is insufficient to differentiate it from the mark it incorporates. See Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Thus, the Panel finds that Respondent’s <soldesfilson.com> and <shopfilson.com> domain names are confusingly similar to Complainant’s FILSON mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 has no rights or legitimate interests in the disputed domain names, as it is not commonly known by the domain names and Complainant has not authorized or licensed Respondent to use its FILSON mark. The WHOIS information identifies Respondent as “Ahdg Tbdye / Ybcbd Xhbc”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). 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.)
Complainant argues that Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass of as a complainant and sell unauthorized or counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial 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 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 disputed domain names’ resolving website which displays Complainant’s FILSON mark and photos and purports to sell products identical to Complainant. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith since Respondent is passing itself off as Complainant in an attempt to divert Internet users to Respondent’s website to offer unauthorized or counterfeit versions of Complainant’s products. This constitutes bad faith under Policy ¶ 4(b)(iii) and (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 Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”) Accordingly, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the FILSON mark based on Respondent’s use of the FILSON mark and images at the resolving website. Using a disputed domain name to divert Internet traffic to a website where a respondent passes off as a complainant demonstrates actual knowledge of a complainant’s rights in a mark at registration, bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) Accordingly, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights, in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <shopfilson.com> and <soldesfilson.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 13, 2023
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