DECISION
Traeger Pellet Grills LLC v. Zhu Xingxiang
Claim Number: FA2401002077407
PARTIES
Complainant is Traeger Pellet Grills LLC ("Complainant"), represented by Christopher M. Dolan of Barnes & Thornburg LLP, Illinois, USA. Respondent is Zhu Xingxiang ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scottstraeger.com>, registered with Gname.com Pte. Ltd.
PANEL
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 2, 2024; Forum received payment on January 2, 2024.
On January 4, 2024, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <scottstraeger.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 January 5, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of January 25, 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@scottstraeger.com. Also on January 5, 2024, 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 in Chinese and English.
On January 26, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
According to the Registrar's verification response, the registration agreement for the disputed 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 has submitted pursuant to Rule 11(a) that the proceeding should be conducted in English. When considering such submissions it is established practice also to take UDRP Rules 10(b) and (c) into consideration to ensure fairness and justice to both parties. Factors which previous panels have seen as important when determining submissions under Rule 11(a) 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. See Fair Isaac Corporation v. AKPOVO Chidiac, FA 2034648 (Forum Apr. 12, 2023) (finding panel has discretion to conduct proceedings in English contrary to registration agreement given evidence that respondent understands the language).
In the present case, the Complainant submits that the proceeding should be conducted in the English language for several reasons with which the Panel agrees and which are persuasive reasons why the proceeding should be conducted in English. First, the domain name includes the Complainant's TRAEGER mark which is well known in the United States where the principal language is English. Moreover, the domain name itself is in the English language and accordingly it must be assumed that its creator has some facility with that language and wanted English-speaking internet users to read it as an English language domain name. Indeed when the website to which the domain name resolves is examined later in this decision, it will be seen that it advertises a range of Scotts products as well as Traeger products, showing that the Respondent is able to use the English language to create a domain name including a trademark owner's brand in a domain name, such as TRAEGER, to give the false impression that the domain name is an official domain name of the trademark owner, and that it can also be used to lead to the purchase of Scotts and other products as well as Traeger products. This shows a sophistication in the use of the English language.
Secondly, the website to which the domain name resolves displays only English language text and prices in US dollars. The Panel has examined the website and has found that it is to all intents and purposes a purely English language website. Thirdly, the same website includes an address in the United States.
It is therefore clear that the entire operation is aimed at an English-speaking market with which the Respondent must be familiar.
The Respondent must therefore be assumed to have a good working facility with the English language. It is therefore appropriate that the proceeding be conducted in English.
In any event, if the proceeding were not conducted in English , it would have to be conducted in Chinese and all the documents would have to be translated into Chinese, which would be an expensive and unnecessary process.
The Panel therefore determines that pursuant to Rule 11(a), the proceeding will be conducted in the English language.
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company that is the largest manufacturer of premium wood pellet barbeque grills in the world.
2. Complainant has registered trademark rights in the TRAEGER mark by virtue of its registration of the mark with the United States Patent and Trademarks Office ("USPTO"), Registration No. 3244718, registered on May 22, 2007 and other national and international registrations for TRAEGER and derivatives. The Complainant also has common law trademark rights in the TRAEGER trademark and has had those rights for many years prior to the registration of the dispute domain name (collectively "the TRAEGER trademark") and at least since 1986.
3. The TRAEGER trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. Respondent registered the <scottstraeger.com> domain name on October 8, 2022 ("the disputed domain name").
5. In so doing, Respondent has incorporated in the disputed domain name the entirety of Complainant's TRAEGER trademark without any authority to do so, and has added the word "scotts" and the Generic Top Level Domain ".com", neither of which negates a finding of confusing similarity.
6. Respondent has caused the <scottstraeger.com> disputed domain name to resolve to a website that displays the TRAEGER trademark and a wide range of TRAEGER products.
7. The disputed domain name is confusingly similar to the Complainant's TRAEGER trademark.
8. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:
(a) there is no other entity in the Complainant's industry that is known as TRAEGER;
(b) the Respondent is not associated with the Complainant and has never been authorized or licensed by the Complainant to use the TRAEGER trademark in a domain name or in any other way;
(c) the Respondent has used the domain name to resolve to a website that impersonates the Complainant and displays the TRAEGER trademark, purports to sell genuine branded TRAEGER products, displays Complainant's copyright photos of its products, and displays a deceptive copyright notice ;
(d) the Respondent attempts to mislead internet users to believe mistakenly that its website is affiliated with, sponsored by or authorized by the Complainant which it is not and by that means it deceives internet users;
(e) the Respondent is not using the domain name for a bona fide offering of goods or services;
(f) the Respondent has used a privacy service to register the domain name;
(g) the Respondent is not commonly known by the domain name within the meaning of Policy ¶4(c)(ii);
(h) the Respondent has not utilized the domain name for a legitimate noncommercial or fair use of the domain name within the meaning of Policy ¶4(c)(iii).
9. The Respondent has registered and used the disputed domain name in bad faith. That is so because the Respondent:
(a) has registered the domain for the purpose of disrupting the Complainant's business within the meaning of Policy ¶4(b)(iii);
(b) has intentionally attempted to attract, for commercial gain, internet users to the resolving website by creating confusion with the TRAEGER trademark within the meaning of Policy ¶4(b) (iv) and to make money;
(c) had actual knowledge of the Complainant and its TRAEGER trademark when it registered and used the domain name;
(d) has used the Complainant's TRAEGER trademark and the offending website to mislead internet users by passing itself off as the Complainant;
(e) has registered the domain name and used the offending website to attract internet users without the Complainant's permission and for financial gain;
(f) has created a website that claimed to be a site where buyers could purchase the Complainant's branded goods and which was calculated to give the appearance of an association with the Complainant and to earn money for the Respondent;
(g) has, by virtue of all of the facts, shown that it registered and used the disputed domain name in bad faith.
10. The Complainant has cited numerous prior UDRP decisions to support its contentions.
11. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish and that the domain name should be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that is the largest manufacturer of premium wood pellet barbeque grills in the world.
2. The evidence shows that Complainant has registered trademark rights in the TRAEGER mark by virtue of its registration of the mark with the United States Patent and Trademarks Office ("USPTO"), Registration No. 3244718, registered on May 22, 2007 and other national and international registrations for TRAEGER and derivatives. The evidence also shows that Complainant has common law trademark rights in the TRAEGER trademark and has had those rights for many years prior to the registration of the dispute domain name (collectively "the TRAEGER trademark") and at least since 1986.
4. Respondent registered the <scottstraeger.com> domain name on October 8, 2022 ("the disputed domain name").
5. Respondent has caused the <scottstraeger.com> disputed domain name to resolve to a website that displays the TRAEGER trademark and a wide range of products that purport to be TRAEGER products.
6. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's TRAEGER trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used in bad faith.
7. Accordingly, the disputed domain name should be transferred to the Complainant.
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 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
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely.
The evidence shows that the Complainant has registered trademark rights in the TRAEGER mark by virtue of its registration of the mark with the United States Patent and Trademarks Office ("USPTO"), Registration No. 3244718, registered on May 22, 2007 and other national and international registrations for TRAEGER and derivatives. The Complainant also has common law trademark rights in the TRAEGER trademark and has had those rights for many years prior to the registration of the dispute domain name (collectively "the TRAEGER trademark") and at least since 1986.
The Complainant has adduced evidence of the foregoing registrations, which the Panel has examined and which it finds to be in order. Registration of a trademark with a recognized authority such as the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) and that the Complainant "has" a trademark, which is the element that it must prove and which it has established. Since Complainant has registered and established its rights in the TRAEGER trademark through its widespread registration and use of the mark and since the evidence shows a well-established common law trademark, the Panel finds that the Complainant has rights in the TRAEGER trademark under Policy ¶ 4(a)(i).
In that regard, the Panel finds that the registered trademark was registered and the common law trademark rights were acquired well prior to the Respondent's registration of the disputed domain name on October 8, 2022.
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's TRAEGER trademark. The Panel finds that the disputed domain name is confusingly similar to the TRAEGER trademark because the Respondent has incorporated the entirety of the trademark in the domain name and, in constructing it, has added the word "scotts" and also the generic top-level domain ".com", neither of which can negate the confusing similarity between the domain name and the trademark. In any event, when the website to which the domain name resolves is examined at a latter point in this decision, it will be seen that it offers for sale and promotes several products named Scotts, as in Scotts Nature Scapes and several other Scotts products. But whatever the reason may be for including "scotts" in the domain name, the dominant portion of the domain name is "traeger". UDRP panels routinely hold that neither of the above factors can negate a finding of confusing similarity which otherwise exists, as it does in the present case, where the domain name clearly invokes the TRAEGER trademark. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant and its TRAEGER trademark and its use by the Respondent with the approval and consent of the Complainant. It is therefore clear that the domain name is similar to the trademark and confusingly so.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant's TRAEGER trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the Respondent has chosen to take the Complainant's TRAEGER trademark and to use it in its domain name, adding only the word "scotts" and the gTLD ".com" which do not negate the confusing similarity between the domain name and the trademark, generating the clear impression that it is referring to and invoking the Complainant's trademark and that the Respondent is authorized to do so. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;
(d) having registered the disputed domain name, the Respondent then set about causing it to resolve to a website that impersonates the Complainant and displays the TRAEGER trademark, including its identifiable image of a mountain range, offers purported TRAEGER products for sale, displays Complainant's copyright photos of its products and displays a deceptive copyright notice;
(e) this use could not give the Respondent a right or legitimate interest in the domain name as it was dishonestly asserting that genuine branded TRAEGER products could be bought via the website and with the approval of the Complainant; this was a clear infringement of the Complainant's trademark;
(f) this use of the domain name was an attempt by the Respondent to pass itself off as the Complainant;
(g) the evidence of these matters is contained in the Complainant's Exhibits F. That exhibit shows extensive use of the TRAEGER trademark with its conspicuous symbol of a mountain range, a wide range of products for sale under the label "TRAEGER", with prices, delivery arrangements, a cart for purchases, facilities for paying by credit card and all the other accoutrements a buyer would expect to see on a retail website of this sort. All of this evidence shows an intention to use the Complainant's trademark, to pretend that the Respondent is the Complainant or operating with its approval, to conduct business allegedly with the permission of the Complainant and of course to sell goods under the Complainant's name and trademark.
(h) In all, the only conclusion that can be reached on the evidence is that the Respondent is using the Complainant's trademark and business to make money by offering the same or counterfeit products to those of the Complainant. It is clearly deceptive because the whole thrust of the offer is that it is a legitimate service that is being offered, which is an entirely false assertion;
(i) the evidence shows that the Respondent is not commonly known by the domain name;
(j) the evidence also shows that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the opposite is the case, as the evidence shows that the Respondent is not using it for a bona fide offering of goods or services but is using it to resolve to a website that falsely asserts that it can offer legitimate TRAEGER goods and services promoted by the website. This is tantamount to a fraud on internet users which cannot give rise to a right or legitimate interest on the part of the Respondent in the domain name;
(k) the evidence also shows that the domain name is not being used for a legitimate non-commercial or fair use of the domain name; the use of the domain name has been demonstrated to be illegitimate; it also cannot be said to be non-commercial in any sense as it clearly is intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission and to pretend that it is being used with the approval of the Complainant as trademark owner;
(l) the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain name or to use the TRAEGER trademark in any way;
(m) the Complainant and the Respondent are not affiliated, connected, or associated with each other;
(n) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the domain name;
(o) there is no other entity in the Complainant's industry that is known as TRAEGER; and
(p) the Respondent used a privacy service to register the domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempt by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds on each of which the Panel now make findings:
(a) the Respondent has registered the domain for the purpose of disrupting the Complainant's business within the meaning of Policy ¶4(b)(iii); this has clearly been made out on the evidence;
(b) the Respondent has intentionally attempted to attract, for commercial gain, internet users to the resolving website by creating confusion with the TRAEGER trademark within the meaning of Policy ¶ 4(b)(iv) to make money; this has clearly been made out on the evidence, as the Respondent's conduct was misleading from the start; the Respondent set about creating a domain name and a website that falsely pretended that it could lawfully use the trademark, that its website was a genuine TRAEGER website, that genuine TRAEGER products could be bought there and that other products, including Scotts products could also be bought there under the imprimatur of the Complainant; all of this must have been calculated to confuse internet users as to whether the offending website was a website of the Complainant or one permitted by the Complainant, neither of which is the case;
(c) the Respondent had actual knowledge of the Complainant and its TRAEGER trademark when it registered and used the domain name; the Respondent did not choose the domain name by accident, on a whim or by coincidence and the whole thrust of the evidence shows that it knew what it was doing, that it chose the domain name deliberately and that it was brazenly targeting the Complainant and its TRAEGER trademark;
(d) the Respondent has used the Complainant's TRAEGER trademark and the offending website to mislead internet users by passing itself off as the Complainant; clearly the Respondent was asserting that it was the Complainant or acting with the consent of the Complainant;
(e) the Respondent has registered and used the domain name and the offending website to attract internet users without the Complainant's permission and for financial gain; this is self-evident from the evidence and in particular from advertising specific products purporting to be genuine TRAEGER products and facilities for paying for and delivering those products;
(f) the Respondent has created a website that claimed to be a site where buyers could purchase the Complainant's branded goods and other goods and which was calculated to give the appearance of an association with the Complainant and to earn money for the Respondent; this has also been made out by the evidence;
(g) the Respondent has, by virtue of all of the facts, shown that it registered and used the disputed domain name in bad faith.
The Panel therefore finds that each of the grounds relied on by the Complainant has been made out by the detailed case presented by the Complainant
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the TRAEGER trademark and in view of the conduct that the Respondent has engaged in when using the domain name for its website, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
The Complainant has correctly cited several prior UDRP decisions that support its contentions.
Complainant has thus made out the third of the three elements that it must establish.
Complainant has established all of the elements that it must show under the Policy and is therefore entitled to the relief it seeks.
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 <scottstraeger.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: January 28, 2024
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