DECISION

 

ContextLogic Inc. v. mengshi wei

Claim Number: FA2312002076114

 

PARTIES

Complainant is ContextLogic Inc. ("Complainant"), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is mengshi wei ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wish-shoppings.com>, registered with OwnRegistrar, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 20, 2023; Forum received payment on December 20, 2023.

 

On December 21, 2023, OwnRegistrar, Inc. confirmed by e-mail to Forum that the <wish-shoppings.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 December 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2024 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@wish-shoppings.com. Also on December 27, 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 January 17, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant is the owner and operator of the e-commerce platform WISH, available via www.wish.com and the WISH mobile application. Complainant has been using the trademark WISH in connection with a variety of goods and services, including online retail store services and online marketplace services, since at least as early as 2011. Complainant has approximately 23 million monthly active users and is one of the most-downloaded and largest mobile shopping applications in the United States. Complainant also owns numerous foreign trademark registrations for the WISH trademarks worldwide.

 

The disputed domain name is identical and/or confusingly similar to

Complainant's WISH trademarks, as <wish-shoppings.com> incorporates Complainant's distinct WISH word trademark in its entirety as the dominant and primary portion of the domain. The only difference between the disputed domain name and Complainant's WISH trademark is the addition of a hyphen, the generic term "shoppings" and a gTLD.

 

Respondent has no rights or legitimate interests in the disputed domain name because Respondent: (1) has never been known or referred to as WISH or any variation thereof; (2) is not affiliated with, licensed or otherwise authorized by Complainant to use the WISH trademark; and (3) has not used the disputed domain name in connection with a bona fide offering of goods or services.

 

Respondent registered and is using the disputed domain name in bad faith. At the time Respondent registered <wish-shoppings.com>, the WISH trademarks were distinctive and registered throughout numerous jurisdictions in the world, so as to give constructive, if not actual notice, to Respondent that the registration of <wish-shoppings.com> at issue would violate Complainant's rights. Moreover, Respondent is not using the disputed domain name to display any active content. Respondent's lack of any actual use indicates that the disputed domain name was registered, and is being used, in bad faith.

 

Further, Respondent prominently displays the WISH trademarks on the sub-domain associated with the disputed domain name. This webpage displays the WISH trademarks along with a request for an account number and password. This content is clearly used to impersonate Complainant in order to deceive innocent third parties and customers of complainant, all for the commercial gain of Respondent. This constitutes bad faith use.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 6,142,756 WISH (word), registered September 1, 2020 for goods and services in Intl Classes 9, 38 and 42:

No. 4,340,974 WISH (word), registered May 28, 2013 for services in Intl Class 35;

No. 4,311,924 WISH (word), registered April 2, 2013 for services in Intl Class 42;

No. 4,921,074 WISH – SHOPPING MADE FUN (word), registered March 22, 2016 for goods in Intl Class 9;

No. 6,051,493 WISH LOCAL (word), registered May 12, 2020 for services in Intl Classes 35 and 39;

No. 6,899,114 WISH PARCEL (word), registered November 15, 2022 for services in Intl Classes 35 and 39;

No. 6,099,348 WISH PARCEL (word), registered July 14, 2020 for services in Intl Classes 35 and 39;

No. 6,310,193 WISH (logo), registered March 30, 2021 for goods and services in Intl Classes 9, 38 and 42;

No. 6,606,254 WISH (logo), registered January 4, 2022 for goods and services in Intl Classes 9, 38 and 42;

No. 6,817,155 WISHEXPRESS (word), registered August 16, 2022 for services in Intl Class 35;

No. 6,497,764 WISHPOST (word), registered September 28, 2021 for services in Intl Classes 35 and 39; and

No. 6,497,766 WISHPOST (logo), registered September 28, 2021 for services in Intl Classes 35 and 39.

 

The disputed domain name <wish-shoppings.com> was registered on September 17, 2023.

 

DISCUSSION

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 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").

 

Identical and/or Confusingly Similar

Respondent asserts rights in the WISH trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 6,142,756, registered September 1, 2020). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such 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)."). Therefore, in the present case, the Panel find that Complainant has demonstrated rights in the WISH trademark per Policy ¶ 4(a)(i).

 

Complainant argues Respondent's <wish-shoppings.com> domain name is identical or confusingly similar to Complainant's WISH trademark as the only difference between the trademark and the disputed domain name is the addition of a hyphen, the generic term "shoppings" and a gTLD.

 

Addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See 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 as the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).

 

Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant's trademark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."); see also Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Complainant contends that Respondent lacks rights or legitimate interests in the <wish-shoppings.com> domain name as Respondent is neither commonly known by the <wish-shoppings.com>  domain name, nor has Complainant given Respondent permission to use Complainant's trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) ("The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent's failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii)."). Additionally, lack of authorization to use a complainant's trademark 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 in this case lists the registrant as "mengshi wei", and there is no other evidence to suggest that Respondent was authorized to use the WISH trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Further, Complainant states that the only use of the disputed domain name is to link the same to a web page that displays the WISH trademark along with a request for an account number and password. Complainant has provided the Panel a screenshot of the resolving webpage of the disputed domain name which centralized displays the WISH trademark in the specific logo version registered by the Complainant, together with a number of requests for identification, including account number and password. Such use is never considered as legitimate interest.

 

The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disptued domain name under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and is using the disputed domain name in bad faith as the Complainant's distinctive trademark—at the time of Respondents registration of <wish-shoppings.com>—was registered throughout numerous jurisdictions in the world, and that the disputed domain name is only inactively used to point to a web site displaying the WISH trademark along with a request for an account number and password.

 

Generally, use of a domain name to create a likelihood of confusion by using a well-known trademark maybe evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant's well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). In this case, Complainant argues that Respondent's attempt to use its well-known trademark in its domain name is evidence of bad faith. The Panel notes that the WISH trademark is distinctive, and that the addition of the generic word "shoppings" rather further connects to the goods and services provided by the Complainant.

 

Also, the fact that <wish-shoppings.com> is used for a web site displaying Complainants figurative trademark version in combination with the attempt to collect personal information from the customers, is additional evidence of both registration and use in bad faith.

 

Therefore, the Panel finds that Respondent registered and used the <wish-shoppings.com> domain name in bad faith per Policy ¶4(b)(iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wish-shoppings.com> domain name be TRANSFERRED from Respondent to Complainant.

        

 

Petter Rindforth, Panelist

Dated: January 31, 2024