Sheltered Wings, Inc. DBA Vortex Optics v. li yi
Claim Number: FA2308002056161
Complainant is Sheltered Wings, Inc. DBA Vortex Optics (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is li yi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vortexoptics-home.com> and <vortexopticshome.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 August 4, 2023; Forum received payment on August 4, 2023.
On August 8, 2023, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <vortexoptics-home.com> and <vortexopticshome.com> domain names (the “Domain Names”) are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 August 14, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint setting a deadline of September 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@vortexoptics-home.com and postmaster@vortexopticshome.com. Also on August 14, 2023, the Chinese and English 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 September 6, 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 ISSUES:
Language of The Proceeding
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 ¶ 4.5.1, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (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, D2006-0432 (WIPO June 12, 2006) (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 websites to which the Domain Names resolve are written completely in English, the Domain Names target a U.S.-based trademark, and the prices given for products advertised on Respondent’s websites are in U.S. dollars. The second of these arguments is supported by the Domain Names themselves. Both websites resolving from the Domain Names are written completely in English (screenshots submitted as Complaint Exhibit H). 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 Chinese 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.
Multiple Domain Names
The Complaint relates to two 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.” The WHOIS information furnished to Forum by the registrars lists Respondent as the registrant of both Domain Names. The websites resolving from both Domain Names are virtually identical to each other in general appearance and content, displaying photos of the same products worn by the same models, and using Complainant’s mark in exactly the same manner (screenshots submitted as Complaint Exhibit H). On this evidence, the Panel finds that both Domain Names are registered to the same person or entity or are under common control and will proceed as to both 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.”).
A. Complainant
Complainant is a well-known distributor of lens sights for firearms, rangefinders and binoculars. It has rights in the VORTEX OPTICS mark based upon its registration of that mark with the European Union Intellectual Property Office (EUIPO). Respondent’s Domain Names are identical or confusingly similar to Complainant’s mark because they incorporate the mark in its entirety, merely adding a hyphen in one case, the term “home” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. It is not commonly known by the Domain Names, Complainant has not authorized or licensed Respondent to use its VORTEX OPTICS 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 is using them to host websites which impersonate Complainant and purport to offer Complainant’s products for sale.
Respondent registered and uses the Domain Names in bad faith. It is using the Domain Names to attract for commercial gain Internet users to its websites by causing confusion with Complainant’s mark as to the source, sponsorship, endorsement or affiliation of its websites, which impersonate Complainant and purport to offer Complainant’s products for sale. Respondent had actual knowledge of Complainant and its rights in the VORTEX OPTICS mark when it registered 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 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 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. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). 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 VORTEX OPTICS mark was registered to Complainant with the EUIPO (Reg. No. 018020329) on July 9, 2019 (EUIPO registration certificate included in Complaint Exhibit F). Complainant’s registration of its VORTEX OPTICS mark with the EUIPO establishes rights in that mark for the purposes of Policy ¶ 4(a)(i). Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO).
Respondent’s <vortexoptics-home.com> and <vortexopticshome.com> Domain Names are identical or confusingly similar to Complainant’s mark. They fully incorporate the mark, merely omitting the space, adding a hyphen in one case, and adding the term “home” and the gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”), Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under 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, and they are likely to cause confusion.
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 is not commonly known by the Domain Names, (ii) Complainant has not authorized or licensed Respondent to use its VORTEX OPTICS mark, and (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 is using them to host websites which impersonate Complainant and purport to offer Complainant’s products for sale. These allegations are addressed as follows:
The WHOIS information provided to Forum by the registrar lists the registrant of the Domain Names as “li yi.” This name bears no 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 Exhibit H contains screenshots of pages on the websites resolving from the Domain Names. The first page of each prominently displays the name VORTEX. Both sites purport to offer Complainant’s products for sale at dramatically discounted prices (e.g., $1,049.99 reduced to $119.99) and display literally the same photos not only of the products but of individuals using those products, in the same outdoor environment. Respondent’s web sites are almost exact copies of the pages of Complainant’s website at <vortexoptics.com> as shown in Complaint Exhibit K. The appearance and general layout of these pages give the impression that they are sponsored by Complainant. Respondent is impersonating and passing off as Complainant and purporting to sell Complainant’s products. Neither of these activities qualifies 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 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 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. 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 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 Names to pass off as Complainant. Policy ¶ 4(b) 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 (January 5, 2005). 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.”).
Complainant alleges that Respondent’s conduct also falls within the circumstances described in Policy ¶ 4(b)(iii). 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 Names to attract Internet traffic to its web sites and passing off as Complainant, Respondent is disrupting the business of Complainant. While Respondent is presently competing with Complainant, however, there is another aspect of the concept of competition that must be considered. In order for a respondent’s conduct to fall within Policy ¶ 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 there is no evidence that Complainant and Respondent were competitors when the Domain Names were registered in July 2023 (registration dates shown in the WHOIS printouts included in Complaint Exhibit I). 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 Names. 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 impersonates 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 January 3, 2020).
Next, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in July 2023 (WHOIS printouts submitted as Complaint Exhibit I show the creation dates). In order to impersonate Complainant, literally copying the content on Complainant’s website to its own sites, Respondent would have to have had actual knowledge of Complainant. There is no question that Respondent knew of Complainant and its 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 set forth above, 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 Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vortexoptics-home.com> and <vortexopticshome.com> Domain Names be TRANSFERRED from Respondent to Complainant
Charles A. Kuechenmeister, Panelist
September 8, 2023
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