Moscot Management LLC v. Melanie Nacht / Christina Gaertner / Jonas Gaertner / Tom Egger / Lisa Hertz / Client Care / Web Commerce Communications Limited / klaus zweig / julia sanger / anja propst
Claim Number: FA2305002045786
Complainant is Moscot Management LLC (“Complainant”), represented by Brett E. Lewis of Lewis & Lin LLC, New York. Respondent is Melanie Nacht / Christina Gaertner / Jonas Gaertner / Tom Egger / Lisa Hertz / Client Care / Web Commerce Communications Limited / klaus zweig / julia sanger / anja propst (“Respondent”), DE.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <moscotturkiye.com>, <moscotnz.com>, <moscotchile.com>, <moscotespana.com>, <moscotbelgie.com>, <moscotmexico.com>, <moscotnorge.com>, <moscotdanmark.com>, <moscotportugal.com>, <moscotsuomi.com>, <moscot-france.com>, <moscotcanada.com>, <moscotitalia.com>, <moscotosterreich.com>, <moscotphilippines.com>, <moscotsingapore.com>, <moscotsverige.com>, <moscotargentina.com>, <moscotschweiz.com>, <moscothungary.com>, <moscotaustralia.com>, <moscotmalaysia.com>, <moscotfrance.com>, <moscotdeutschland.com>, <moscotnederland.com>, <moscotpolska.com>, <moscotcolombia.com>, <moscotgreece.com>, <moscotireland.com>, <moscotromania.com>, and <moscotuk.com>, registered with Web Commerce Communications Limited Dba Webnic.cc, and Alibaba.Com Singapore E-Commerce Private Limited.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on May 23, 2023; Forum received payment on May 23, 2023.
On May 24, 2023, May 25, 2023 and June 1, 2023, Web Commerce Communications Limited Dba Webnic.cc, and Alibaba.Com Singapore E-Commerce Private Limited confirmed by e-mail to Forum that the <moscotturkiye.com>, <moscotnz.com>, <moscotchile.com>, <moscotespana.com>, <moscotbelgie.com>, <moscotmexico.com>, <moscotnorge.com>, <moscotdanmark.com>, <moscotportugal.com>, <moscotsuomi.com>, <moscot-france.com>, <moscotcanada.com>, <moscotitalia.com>, <moscotosterreich.com>, <moscotphilippines.com>, <moscotsingapore.com>, <moscotsverige.com>, <moscotargentina.com>, <moscotschweiz.com>, <moscothungary.com>, <moscotaustralia.com>, <moscotmalaysia.com>, <moscotfrance.com>, <moscotdeutschland.com>, <moscotnederland.com>, <moscotpolska.com>, <moscotcolombia.com>, <moscotgreece.com>, <moscotireland.com>, <moscotromania.com>, and <moscotuk.com> domain names (the Domain Names) are registered with Web Commerce Communications Limited Dba Webnic.cc, and Alibaba.Com Singapore E-Commerce Private Limited and that Respondents are the current registrants of the names. Web Commerce Communications Limited Dba Webnic.cc; Alibaba.Com Singapore E-Commerce Private Limited have verified that Respondents are bound by the Web Commerce Communications Limited Dba Webnic.cc and Alibaba.Com Singapore E-Commerce Private Limited registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 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@moscotturkiye.com, postmaster@moscotnz.com, postmaster@moscotchile.com, postmaster@moscotespana.com, postmaster@moscotbelgie.com, postmaster@moscotmexico.com, postmaster@moscotnorge.com, postmaster@moscotdanmark.com, postmaster@moscotportugal.com, postmaster@moscotsuomi.com, postmaster@moscot-france.com, postmaster@moscotcanada.com, postmaster@moscotitalia.com, postmaster@moscotosterreich.com, postmaster@moscotphilippines.com, postmaster@moscotsingapore.com, postmaster@moscotsverige.com, postmaster@moscotargentina.com, postmaster@moscotschweiz.com, postmaster@moscothungary.com, postmaster@moscotaustralia.com, postmaster@moscotmalaysia.com, postmaster@moscotfrance.com, postmaster@moscotdeutschland.com, postmaster@moscotnederland.com, postmaster@moscotpolska.com, postmaster@moscotcolombia.com, postmaster@moscotgreece.com, postmaster@moscotireland.com, postmaster@moscotromania.com, postmaster@moscotuk.com. Also on June 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 June 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Multiple Domain Names and Respondents
The Complaint names seven persons as Respondents and relates to 31 Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” For convenience of reference, each Domain Name is assigned a number, as follows:
1. <moscotturkiye.com>, 2. <moscotnz.com>, 3. <moscotchile.com>,
4. <moscotespana.com>, 5. <moscotbelgie.com>,
6. <moscotmexico.com>, 7. <moscotnorge.com>,
8. <moscotdanmark.com>, 9. <moscotportugal.com>,
10. <moscotsuomi.com>, 11. <moscot-france.com>,
12. <moscotcanada.com>, 13. <moscotitalia.com>,
14. <moscotosterreich.com>, 15. <moscotphilippines.com>,
16. <moscotsingapore.com>, 17. <moscotsverige.com>,
18. <moscotargentina.com>, 19. <moscotschweiz.com>,
20 <moscothungary.com>, 21. <moscotaustralia.com>,
22. <moscotmalaysia.com>, 23. <moscotfrance.com>,
24. <moscotdeutschland.com>, 25. <moscotnederland.com>,
26. <moscotpolska.com>, 27. <moscotcolombia.com>,
28. <moscotgreece.com>, 29. <moscotireland.com>,
30. <moscotromania.com>, and 31. <moscotuk.com>
The WHOIS information furnished to Forum by the registrar lists Respondent Client Care / Web Commerce Communications Limited as the registrant of Domain Names 1, 2, 4-7, 9, 11-13, 15-22, and 24-26. This same information lists different names and addresses of the registrants for the other Domain Names, but all of the Domain Names utilize the same naming convention, i.e., Complainant’s mark followed by the name of a country written in the language of that country, which strongly suggests a common ownership or control among them. Finally, the websites to which all but two Domain Names resolve are virtually identical in appearance, displaying the same materials in virtually the same layout and format. The two exceptions are Domain Names 23 and 29, which show a “this site can’t be reached” message, but again the naming convention for these is so similar to that of the others as to make it virtually certain that they are under common ownership or control with the others. On this evidence, the Panel finds that all 31 Domain Names are registered to the same person or entity or are under common control and will proceed as to all of them. Caterpillar v. Arendt, FA1805001789701 (Forum July 2, 2018), (“The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use Cloudfare servers. Also, the registrant used the same privacy service for all three domain names. These elements are sufficient to find that the domain names were registered by the same domain name holder.”). References to “Respondent” in this Decision, even though in the singular, refer to all of the named Respondents.
A. Complainant
Complainant is an online retailer and wholesale servicer of eyeglass frames. It has rights in the MOSCOT mark through its registration of that mark with multiple trademark organizations including the United States Patent and Trademark Office (USPTO). Respondent’s <moscotturkiye.com>, <moscotnz.com>, <moscotchile.com>, <moscotespana.com>, <moscotbelgie.com>, <moscotmexico.com>, <moscotnorge.com>, <moscotdanmark.com>, <moscotportugal.com>, <moscotsuomi.com>, <moscot-france.com>, <moscotcanada.com>, <moscotitalia.com>, <moscotosterreich.com>, <moscotphilippines.com>, <moscotsingapore.com>, <moscotsverige.com>, <moscotargentina.com>, <moscotschweiz.com>, <moscothungary.com>, <moscotaustralia.com>, <moscotmalaysia.com>, <moscotfrance.com>, <moscotdeutschland.com>, <moscotnederland.com>, <moscotpolska.com>, <moscotcolombia.com>, <moscotgreece.com>, <moscotireland.com>, <moscotromania.com>, and <moscotuk.com> Domain Names are identical or confusingly similar to Complainant’s MOSCOT mark as they all fully incorporate Complainant’s mark, merely adding the name of a country and in one case a hyphen, and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. Respondent has not been commonly known by the Domain Names, Complainant has not authorized or licensed Respondent to use its MOSCOT mark, and Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead diverts users to its websites where it sells counterfeit products advertised as those of Complainant and fails to make active use of two of the Domain Names.
Respondent registered and uses the Disputed Domain Names in bad faith. It registered the Domain Names while itself having no connection with Complainant or its mark, passes off as and competes with Complainant, and passively holds two of the Domain Names.
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 ¶ 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 MOSCOT mark was registered to Moscot Management Corp. with the USPTO (Reg. No. 3,380,737) on February 12, 2008 (USPTO registration certificate included in Complaint Annex 1). There is no documentary evidence of Complainant’s conversion from a corporate to an LLC form of organization but such conversions are common, and the Declaration of Complainant’s CEO submitted as Complaint Annex 3 states specifically that Complainant has been a family business since 1920 and is the current owner of all of its trademark registrations. Complainant is the current owner of the registration identified above and as such has rights in the MOSCOT mark 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 Domain Names are identical or confusingly similar to Complainant’s MOSCOT mark. They all fully incorporate the mark, merely adding the name of a country and the “.com” gTLD. One of the Domain Names also adds a hyphen. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”), ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”) The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the MOSCOT mark, 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 ¶ 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 Names because (i) it has not been commonly known by the Domain Names, (ii) Complainant has not authorized or licensed Respondent to use its MOSCOT mark, (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead diverts users to its websites where it sells counterfeit products advertised as those of Complainant, and (iv) it fails to make active use of two of the Domain Names. These allegations are addressed as follows:
The WHOIS information furnished to Forum by the registrars lists Respondent Client Care / Web Commerce Communications Limited as the registrant of Domain Names 1, 2, 4-7, 9, 11-13, 15-22, and 24-26. This same information lists the other persons named as Respondents herein as the registrants of the other Domain Names. None of these names bears any resemblance to the Domain Names. 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 Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Annex 5 contains screenshots of the websites resolving from the Domain Names. All of the Domain Names but numbers 23 and 29 resolve to websites that are very nearly identical to each other in appearance and general layout and to Complainant’s website located at <moscot.com> as shown on Complaint Annex 4. All of the Respondent websites offer what appear to be the same eyewear products as those offered on Complainant’s website, they have the same layout and general appearance as the pages on Complainant’s website (screenshots submitted as Complaint Annex 4), and many of them prominently feature Complainant’s MOSCOT mark, printed in the distinctive black lettering on gold background, with exactly the same font used by Complainant. Respondent is clearly passing off as Complainant or as an authorized dealer of Complainant products and competing with Complainant. Passing off as a complainant or authorized dealer 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).”).
Complaint Annex 5 also includes screenshots of the webpages resolving from Domain Names 23 and 29. The only substantive content shown on these pages is the message “this site can’t be reached.” Respondent is making no active use of these Domain Names. This is neither a bona fide offering of goods within the meaning of Policy ¶ 4(c)(ii) or services nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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 Names.
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 Names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. In the Declaration of Complainant’s CEO (Complaint Annex 3), he states that every month his retail outlets receive complaints from customers who have purchased inferior counterfeit products from Respondent’s websites. He further states that Respondent has blocked its websites from resolving in the United States, apparently to avoid or delay detection of its operations by Complainant. 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 Names to pass off as Complainant. This does not fit precisely within 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 December 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.”).
Next, Respondent registered and is using the Domain Names, which incorporate and are confusingly similar to the MOSCOT mark, but Respondent has no legitimate connection with that mark or its owner, the Complainant. In light of the nonexclusive nature of Policy ¶ 4(b), the use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum March 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
As discussed above, two of the Domain Names resolve to inactive websites. This also does not fit within any of the circumstances described in Policy ¶ 4(b) but in light of the non-exclusive nature of Policy ¶ 4(b), failure to make active use of a confusingly similar domain name is evidence of bad faith. Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Finally, although not argued in so many words by Complainant, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names. Respondent was sufficiently aware of Complainant and its mark to advertise the same products as those offered by Complainant, on websites that mimic and copy the pages on Complainant’s website. There is no question that it had actual knowledge of Complainant and its rights in the MOSCOT mark when it registered the Domain Names. 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 above set forth, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moscotturkiye.com>, <moscotnz.com>, <moscotchile.com>, <moscotespana.com>, <moscotbelgie.com>, <moscotmexico.com>, <moscotnorge.com>, <moscotdanmark.com>, <moscotportugal.com>, <moscotsuomi.com>, <moscot-france.com>, <moscotcanada.com>, <moscotitalia.com>, <moscotosterreich.com>, <moscotphilippines.com>, <moscotsingapore.com>, <moscotsverige.com>, <moscotargentina.com>, <moscotschweiz.com>, <moscothungary.com>, <moscotaustralia.com>, <moscotmalaysia.com>, <moscotfrance.com>, <moscotdeutschland.com>, <moscotnederland.com>, <moscotpolska.com>, <moscotcolombia.com>, <moscotgreece.com>, <moscotireland.com>, <moscotromania.com>, and <moscotuk.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: July 11, 2023
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