PilotMall.com Inc. v. Mo rrey
Claim Number: FA2307002053353
Complainant is PilotMall.com Inc. (“Complainant”), represented by Neil Glazer, Georgia, USA. Respondent is Mo rrey (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilmall.shop> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”).
The undersigned certifies 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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on July 16, 2023; Forum received payment on July 16, 2023.
On July 17, 2023, the Registrar confirmed by e-mail to Forum that the <pilmall.shop> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. The Registrar 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 July 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@pilmall.shop. Also on July 25, 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 August 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an online Internet store that offers pilot books, FAA charts, flight bags, GPS receivers, aviation headsets, aircraft intercoms, pilot supplies, professional pilot supplies, aviation software, logbook software, flight training software, transceivers, aviation watches, and accessories. Complainant owns the domain name <pilotmall.com> and sells its products online at its official website at “www.pilotmall.com”.
Complainant owns the following registered trademark in the United States Patent and Trademark Office (“USPTO”): PILOT MALL.COM, United States Registration No. 2,910,915, registered on December 14, 2004, with a date of first use anywhere and a date of first use in commerce of Jan 1, 1999, in international class 35 (hereinafter referred to as the “PILOT MALL.COM Mark”).
Complainant has prominently and extensively used, promoted and advertised the PILOT MALL.COM Mark and domain name for over 20 years. By virtue of these efforts, Complainant’s trademark and domain name have become well recognized by consumers as designating Complainant as the source of the promoted goods and services.
The <pilmall.shop> disputed domain name was registered on May 22, 2023 and resolves to a website that is virtually identical to Complainant’s official website. Respondent mimics Complainant’s website and uses the PILOT Mall.COM Mark on the pages of its website, and copies replicas of Complainant’s products to deceive individuals arriving at the website into believing that they have arrived at Complainant’s website, which they have not. The majority of the content of Respondent’s website is copyrighted material, including images of its products, photography and descriptions, taken without permission directly from Complainant without permission.
Based on the foregoing, Complainant claims that the disputed domain name is confusingly similar to the PILOT MALL.COM Mark, that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the PILOT MALL.COM Mark based on its trademark registrations with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PILOT MALL.COM Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 the disputed domain name is confusingly similar to the PILOT MALL.COM Mark as set forth below.
The Panel finds that Complainant has rights in the PILOT MALL.COM Mark per Policy paragraph 4(a)(i) through its registration of the mark with the USPTO (e.g., United States Registration No. 2,910,915, registered on December 14, 2004, with a date of first use anywhere and a date of first use in commerce of Jan 1, 1999, in international class 35). In addition, registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy paragraph 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel further finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PILOT MALL.COM Mark as it consists of the term “pilmall”, which is a portion of the PILOT MALL.COM Mark, although with a minor misspelling.[i] Respondent removed the letters “o” and “t” from “pil” in “pilmall”, and then added the “.shop” generic Top-Level Domain (“gTLD”). Removing letters from a mark to create a misspelling in a disputed domain name does not distinguish a disputed domain name from a mark. See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> disputed domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity).
Moreover, a gTLD is a technical requirement and is irrelevant for purposes of a Policy paragraph 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy paragraph 4(a)(i) analysis because a domain name syntax requires TLDs.”). Given that Respondent only misspells the PILOT MALL.COM Mark through the removal of two letters and then adds a gTLD, the Panel finds the disputed domain name confusingly similar to Complainant’s trademark under Policy paragraph 4(a)(i).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain dame. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the PILOT MALL.COM Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because Respondent uses the disputed domain name to pass itself off as Complainant, as the disputed domain name resolves to a webpage nearly identical to Complainant’s website and contains nearly identical goods for sale. In addition, Respondent’s resolving website has a similar trade dress with replicas of Complainant’s copyrighted images, which does not constitute a legitimate noncommercial or fair use. In fact, the foregoing conduct is sufficient to show that Respondent has no rights or legitimate interests in the disputed domain name. See Opportunity Financial, LLC v. Dylan Smith, FA 2006507 (Forum August 25, 2022) (“Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below, there are no Policy paragraph 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Moreover, Respondent registered and is using the disputed domain name in order to trade upon Complainant’s reputation, which does not constitute a bona fide offering of goods or services. Respondent is instead using the disputed domain name and resolving website to profit from users mistyping or searching and improperly landing on Respondent’s resolving website at “www.pilmall.shop”, assuming it is the homepage of Complainant’s website. See Gen. Mills, Inc. v. Zuccarini, FA 97050 (Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the Panel finds evidence of bad faith disruption of Complainant’s business by Respondent under Policy paragraph 4(b)(iii), as well as Respondent’s attempt to attract users for commercial gain under Policy paragraph 4(b)(iv). Here, Respondent uses the disputed domain name to pass itself off as Complainant and to deceive Internet users into believing that they have reached Complainant’s website or that the website is otherwise affiliated or associated with Complainant. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy paragraph 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.”).
Third, Respondent’s use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products, as in this case, is evidence of bad faith per Policy paragraph 4(b)(iii) and (iv). See Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy paragraph 4(b)(iii) because the respondent used the resolving website to sell complainant’s products, using images copied directly from complainant’s website). In short, Respondent is using the disputed domain name to misdirect Internet users to its own e-commerce website, which offers Complainant’s products, or counterfeit versions thereof, for sale.
Finally, Respondent registered and is using the disputed domain name in bad faith given that Respondent engaged in typosquatting when it registered the disputed domain name, as described above. Typosquatting of a registered trademark, as here, indicates bad faith registration and use per Policy paragraph 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Moreover, the Panel concludes that Respondent’s misspelling of Complainant’s PILOT MALL.COM Mark is an indication that Respondent had actual knowledge of the trademark when it registered the disputed domain name. Such actual knowledge also constitutes bad faith registration and use under Policy paragraph 4(a)(iii).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by 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 <pilmall.shop> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: August 20, 2023
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