18th and Walnut LLC v. Povl akek
Claim Number: FA2306002049844
Complainant is 18th and Walnut LLC (“Complainant”), USA, represented by Chintan A. Desai of Offit Kurman, P.A., Pennsylvania, USA. Respondent is Povl akek (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dagnedoverxy.shop>, registered with NameCheap, Inc.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 20, 2023; Forum received payment on June 20, 2023.
On June 20, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <dagnedoverxy.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@dagnedoverxy.shop. Also on June 21, 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 July 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a handbag company that designs and manufactures designer bags with an emphasis on functionality, fashion and sustainability. Complainant has rights in the DAGNE DOVER mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,905,401, registered February 23, 2016). The disputed domain name is confusingly similar to Complainant’s DAGNE DOVER mark as it incorporates Complainant’s mark and merely adds the letters “xy” and the “.shop” generic top-level-domain name ("gTLD").
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the DAGNE DOVER mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to pass off as Complainant and sell competing products. Respondent solicits personal and financial information from users to a phishing scheme.
iii) Respondent registered and uses the disputed domain name in bad faith. The disputed domain name’s resolving website disrupts Complainant’s business as it passes off as Complainant and confuses users as to the sponsorship or endorsement of the website. Respondent uses the disputed domain name to phish for user’s information and creates a false impression of affiliation. Respondent had actual knowledge of Complainant’s rights in the DAGNE DOVER mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on March 30, 2023.
2. Complainant has established rights in the DAGNE DOVER mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 4,905,401, registered February 23, 2016).
3. The disputed domain name’s resolving website prominently displays Complainant’s DAGNE DOVER mark and the pictures of its products, which are competing versions of Complainant’s products.
4. A gift card that is identical to those offered by Complainant is offered to users at the disputed domain name’s resolving website.
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 asserts rights in the DAGNE DOVER mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 4,905,401, registered February 23, 2016). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). Since Complainant provides evidence of trademark registration with the USPTO, the Panel finds Complainant has established rights in the DAGNE DOVER mark per Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <dagnedoverxy.shop> is confusingly similar to Complainant’s DAGNE DOVER mark as it incorporates Complainant’s mark in its entirety and merely adds the letters “xy” and the “.shop” gTLD. The addition of letters and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). The Panel notes that the disputed domain name incorporates Complainant’s mark in its entirety, and merely adds non-distinctive elements such as the letters “xy” and the “.shop” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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 Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the DAGNE DOVER mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Povl akek” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the DAGNE DOVER mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes itself off as Complainant by selling competing goods. Using a disputed domain name to pass off as a complainant for the purpose of selling competing products may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s resolving website, highlighting how Respondent’s website prominently displays Complainant’s DAGNE DOVER mark and the pictures of its products, which are competing versions of Complainant’s products. Additionally, a gift card that is identical to those offered by Complainant is offered by Respondent to users. Complainant argues Respondent is deliberately attempting to trade upon the goodwill associated with Complainant and confuse and mislead users. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent registered the disputed domain name to pass off as Complainant and sell competing versions of Complainant’s products for Respondent’s financial gain. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant by selling competing products can evince bad faith registration and use per Policy ¶ 4(b)(iv). See 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).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel recalls Complainant provides screenshots of the resolving webpage of the disputed domain name in which Respondent offers similar or identical products for sale. Complainant argues Respondent has created a likelihood of confusion with Complainant’s mark and confuses users into believing Respondent’s website is sponsored or endorsed by Complainant for Respondent’s financial gain. The Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DAGNE DOVER mark based on Respondent’s use of the DAGNE DOVER mark and Respondent’s resolving website directly copying images from Complainant’s website. The Panel notes that Complainant’s mark has become well known in the fashion industry and its products are distributed and sold across the world, which are supported by copies of news articles and press releases regarding Complainant and its associated DAGNE DOVER mark. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the DAGNE DOVER mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <dagnedoverxy.shop> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 16, 2023
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