Fox Factory, Inc. v. Chen Guangze
Claim Number: FA2305002043230
Complainant is Fox Factory, Inc. (“Complainant”), represented by W. Bruce Patterson of Patterson + Sheridan, LLP, Texas, USA. Respondent is Chen Guangze (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bikeraceface.com>, registered with Gname.com Pte. Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist
Lynda M. Braun, Panelist
Sandra J. Franklin, Panelist
Complainant submitted a Complaint to Forum electronically on May 4, 2023; Forum received payment on May 4, 2023.
On May 5, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <bikeraceface.com> domain name (the 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 May 9, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint setting a deadline of May 30, 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@bikeraceface.com. Also on May 9, 2023, the Chinese and English language 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 8, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Charles A. Kuechenmeister, Linda M. Braun and Sandra J. Franklin as Panelists.
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 a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
According to the Registrar, the registration agreement for the Domain Name is written in Chinese. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant filed its Complaint in English and requests that these proceedings be conducted in English. Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at section 4.5.1, The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610 (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language), Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432 (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In this case, the Domain Name is composed of three English words, and the website resolving from it is written exclusively in English (screenshot submitted as Complaint Exhibit 12). From this it appears that Respondent is proficient in English. Further, while Complainant filed its Complaint in English, the Written Notice of the Complaint, written in both Chinese and English, was served upon Respondent in accordance with Rules 1 and 2. Respondent has not submitted a Response or any indication that it desires to participate in this proceeding, in the Chinese language or otherwise. Under these circumstances the Panel finds that the additional time and expense of proceeding in Chinese would be unwarranted inasmuch as the only party who might benefit from that has declined to participate. For this reason, the Panel determines that this proceeding will be conducted in English.
A. Complainant
Complainant offers bike-related equipment and products. It has rights in the RACE FACE and RACEFACE marks through its registration of those marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <bikeraceface.com> Domain Name is identical or confusingly similar to Complainant’s RACE FACE and RACEFACE marks as it incorporates the marks in their entirety, merely eliminating the space from the RACE FACE mark, and adding the word “bike” and the “.com” generic Top-Level Domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, by virtue of its USPTO registration of its marks Complainant has the exclusive right to use those marks and Respondent cannot claim any right or legitimate interest in them, and Respondent is using the Domain Name purportedly to sell Complainant’s products.
Respondent registered and uses the Domain Name in bad faith. It disrupts Complainant’s business and attracts users for commercial gain by causing confusion between Complainant and the content on its website
B. Respondent
Respondent did not submit a Response in 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview 3.0, at section 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The RACE FACE and RACEFACE marks were registered to Complainant with the USPTO (Reg. No. 5,605,351 and Reg. No. 6,579,839 respectively) on November 13, 2018 and December 7, 2021 respectively (USPTO registration certificates submitted as Complaint Exhibits 3 and 2). Complainant’s registration of its marks with the USPTO establishes its rights in those marks for the purposes of Policy ¶ 4(a)(i). Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <bikeraceface.com> Domain Name is identical or confusingly similar to Complainant’s RACE FACE and RACEFACE marks. It fully incorporates each mark, merely omitting a space from one of them, and adding the descriptive term “bike” and the “.com” gTLD. These changes do not distinguish the Domain Name from Complainant’s marks for the purposes of Policy ¶ 4(a)(i). Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”), 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).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the RACE FACE and RACEFACE marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at section 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) by virtue of its USPTO registration of its marks Complainant has the exclusive right to use those marks and Respondent cannot claim any right or legitimate interest in them, and (iii) Respondent is using the Domain Name purportedly to sell Complainant’s products. These allegations are addressed as follows:
The WHOIS information provided to the Forum by the registrar lists the registrant of the Domain Name as “Chen Guangze.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complaint Exhibit 12 contains screenshots of pages on the website resolving from the Domain Name. All of the pages feature the stylized RACEFACE mark registered by Complainant with the USPTO (USPTO registration certificate submitted as Complaint Exhibit 4) and offer bicycle parts and accessories branded as Complainant products. Complainant alleges that these are the same products or types of products sold by it. It submitted no screenshots of its own website, but it did submit additional USPTO registration certificates demonstrating its registration of brand marks including ATLAS, CHESTER, CINCH, TURBINE and VAULT as Complaint Exhibits 6, 7, 9, 10 and 11, all of which brands are advertised on Respondent’s website. These pages give the impression that they are either sponsored by Complainant or by an authorized dealer of Complainant’s products, which they are not. Passing off as a complainant or authorized representative of a complainant and offering to sell a complainant’s products does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as Complainant and without authorization purporting to sell Complainant’s products, Respondent is clearly using the confusingly similar Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. The evidence does not disclose whether Respondent is actually selling the products advertised on its website or fraudulently representing that it does, collecting money from the customer and then not delivering the goods. Regardless of which scenario is present here, Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
As discussed above, Respondent is using the Domain Name to pass off as Complainant or as an authorized affiliate of Complainant, which it is not. This does not fit precisely withing any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith 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.”).
Complainant alleges that Respondent’s conduct also disrupts its business. Complainant does not allege that Respondent’s conduct falls within the circumstances described in Policy ¶ 4(b)(iii), and it does not. That paragraph reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). Respondent is clearly competing with Complainant and, by using the Domain Name to attract Internet traffic to its web site and passing off as Complainant, Respondent is disrupting the business of Complainant. While Respondent and Complainant are competitors, however, there is another aspect of the concept of competition that must be considered. In order for a respondent’s conduct to fall within ¶ 4(b)(iii), the competition must exist before the domain name is registered. Otherwise, the respondent’s conduct would not fall within those circumstances, paraphrased as “you registered the domain name primarily to disrupt the business of a competitor.” The competition must exist before the registration. In this case the Complainant and the Respondent were not competitors when the Domain Name was registered in October 2022 (registration date given in the uncontested allegations in the Complaint). Any actual competition between them arose only after Respondent registered and began using the Domain Names. Even then, it is questionable whether disrupting the Complainant’s business was Respondent’s primary purpose in registering the Domain Name. On the contrary, the evidence strongly suggests that Respondent’s primary motive was not so much to harass or annoy an existing commercial adversary as it was to trade upon Complainant’s goodwill and reputation by creating confusion as to the source, sponsorship, affiliation or endorsement of its sites, which is properly addressed under Policy ¶ 4(b)(iv). Respondent’s conduct does not fall within the circumstances stated in Policy ¶ 4(b)(iii).
That said, using a confusingly similar domain name to attract Internet traffic to a website which passes off as and competes with a complainant wrongfully and unfairly disrupts the business of that complainant and is still bad faith. As discussed above, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name wrongfully to disrupt the business of a complainant is sufficient to meet the requirements of Policy ¶ 4(a)(iii). Respondent knew or should have known the disruptive impact its conduct would have upon Complainant’s business. Respondent intentionally went forward with its plans in spite of that and this demonstrates bad faith independently of Policy ¶ 4(b)(iii). Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico, FA1911001873163 (Forum Jan. 3, 2020).
Finally, although not argued by Complainant, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in October 2022. Complainant had been using its marks since at least as early as the 1992 first use date stated on the USPTO registration certificate submitted as Complaint Exhibit 3. More importantly, Respondent passes off as Complainant or an authorized dealer and purports to offer Complainant’s products using Complainant’s name, its registered stylized mark, and its brand names. There is no question that Respondent knew of Complainant and its marks when it registered the Domain Name. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bikeraceface.com> Domain Name be TRANSFERRED from Respondent to Complainant
Charles A. Kuechenmeister, Panelist and Chair
Lynda M. Braun, Panelist
Sandra J. Franklin, Panelist
June 12, 2023
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