DECISION

 

Turtleson, LLC v. Registration Private

Claim Number: FA2402002082458

 

PARTIES

Complainant is Turtleson, LLC ("Complainant"), represented by Henry B. Ward of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Registration Private ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <turtleson.co>, registered with NameCheap, Inc.

 

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 5, 2024; Forum received payment on February 5, 2024.

 

On February 5, 2024, NameCheap, Inc. confirmed by email to Forum that the <turtleson.co> 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 February 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@turtleson.co. Also on February 7, 2024, the Written Notice of the Complaint, notifying Respondent of the email 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 February 28, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 a supplier of clothing and accessories sold though hundreds of independent retailers in the United States and other countries, with total revenues of more than $17 million in 2023. Complainant and a predecessor in interest have used the TURTLESON mark in connection with retail services and a variety of goods since at least as early as 2009. Complainant owns two United States trademark registrations for TURTLESON in standard character form, along with similar registrations in several other jurisdictions.

 

The disputed domain name <turtleson.co> was registered in August 2023. The name is registered in the name of a privacy registration service, Withheld for Privacy ehf. The underlying registration data revealed by the registrar in connection with this proceeding identified Respondent as Registration Private, which appears to be a different privacy registration service.

 

The domain name is being used for a website that mimics a page on Complainant's website, prominently displaying the designation TURTLESON in connection with men's clothing and accessories, and purporting to offer for sale goods that appear to be identical to those offered for sale on Complainant's website. Complainant states that Respondent is not commonly known by the domain name, has no affiliation or connection with Complainant, and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <turtleson.co> is confusingly similar to its mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <turtleson.co> incorporates Complainant's registered TURTLESON trademark, adding only the ".co" top-level domain. These addition of a top-level domain is normally disregarded for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Netflix, Inc. v. Mika Ltd. / Mika Ltd., FA 2055785 (Forum Sept. 1, 2023) (finding <tudum.co> identical or confusingly similar to TUDUM); Stitch Fix, Inc. v. Zhang Wei, FA 1979330 (Forum Feb. 4, 2022) (finding <stitchfix.co> identical to STITCH FIX). The Panel considers the disputed domain name to be identical or confusingly similar to Complainant's registered mark.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been for a website that passes off as Complainant and purports to offer similar or identical products for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Netflix, Inc. v. Mika Ltd. / Mika Ltd., supra (finding lack of rights or interests in similar circumstances); nZero Labs, Inc. v. Adam Robert, FA 2028611 (Forum Feb. 20, 2023) (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent used two privacy registration services to register a domain name corresponding to Complainant's registered mark and is using the domain name to pass off as Complainant and offer similar or identical products for sale. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Netflix, Inc. v. Mika Ltd. / Mika Ltd., supra (finding bad faith registration and use in similar circumstances); nZero Labs, Inc. v. Adam Robert, supra (same). The Panel so finds.

 

DECISION

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

 

Accordingly, it is Ordered that the <turtleson.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: February 28, 2024