DECISION

 

Walmart Apollo, LLC v. chen li li / chen bing hui

Claim Number: FA2402002086272

 

PARTIES

Complainant is Walmart Apollo, LLC ("Complainant"), represented by Fatima Y. Kassem of Brooks Kushman P.C., Michigan, USA. Respondent is chen li li / chen bing hui ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ozarktrailtent.cc> and <ozarktrailtents.cc>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 29, 2024; Forum received payment on February 29, 2024.

 

On March 1, 2024, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <ozarktrailtent.cc>  and <ozarktrailtents.cc> 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 March 5, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint setting a deadline of March 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@ozarktrailtent.cc, postmaster@ozarktrailtents.cc. Also on March 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 March 26, 2024, 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 any response from Respondent.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUES:

Multiple Respondents and Domain Names

The Complaint names two persons as Respondents and 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."  Complainant alleges that both domain names are operated by the same person or entity using different aliases. The WHOIS information furnished to Forum by the registrar lists a different registrant for each domain name but both registrants have the same surname, Chen, and their email addresses are identical. Also, the websites resolving from both domain names are very nearly identical to each other in general appearance and content, displaying photos of many of the same products and services, and using Complainant's OZARK TRAIL mark in exactly the same manner (screenshots included in Complaint Exhibit 12). Both domain names were registered with the same registrar. 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."). References to "Respondent" in this Decision, even though in the singular, refer to both named Respondents.

 

Language of The Proceeding

According to the Registrar, the registration agreement for the domain names 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, both domain names are        written in English and target a U.S.-based firm, and the websites to which they resolve are written entirely in English, which demonstrates that Respondent is proficient in English.  Complainant is not able to communicate effectively in Chinese. 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 the reasons above set forth, this proceeding will be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a multinational retail corporation which uses the OZARK TRAIL mark in connection with its camping and hiking products. It has rights in the OZARK TRAIL mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and other governmental trademark agencies. Respondent's domain names are identical or confusingly similar to Complainant's mark.

 

Respondent has no rights or legitimate interests in the domain names. It is not affiliated with Complainant and Complainant has not authorized or licensed Respondent to use its mark, 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 impersonate and compete with Complainant and to engage in phishing, and Respondent is not commonly known by the domain names.

 

Respondent registered and uses the domain names in bad faith. It registered and is using them to attract for commercial gain Internet users to its website by creating confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites, it is using them to pass off as Complainant, it registered the domain names with constructive and actual knowledge of Complainant and its mark, it failed to respond to a cease-and-desist demand, and it registered the domain names in violation of Section 2 of the Policy.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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.

 

Identical and/or Confusingly Similar

The OZARK TRAIL mark was registered to Complainant with the USPTO (Reg. No. 1,922,173) on September 6, 1995 (TSDR printout included in Complaint Exhibit 6). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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)."), 

 

Respondent's domain names are identical or confusingly similar to Complainant's mark. They fully incorporate the OZARK TRAIL mark, merely omitting the space and adding the descriptive terms "tent" and "tents" and a generic top-level domain ("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. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."), MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."). 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 the domain names are likely to cause confusion.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in a 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) is not affiliated with Complainant and Complainant has not authorized or licensed Respondent to use its mark, (ii) 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 impersonate and compete with Complainant and to engage in phishing, and (iii) Respondent is not commonly known by the domain names.  These allegations are addressed as follows:

 

Complainant states that Respondent is not affiliated with it and that it has not authorized or licensed 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 names 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 12 contains screenshots of pages of the websites resolving from the domain names. Both sites prominently display the OZARK TRAIL mark at the top of the page and advertise and purport to sell the same products as those offered on Complainant's website, as shown on the screenshot of Complainant's website submitted as Complaint Exhibit 8. Respondent's web pages clearly represent that they are sponsored by Complainant or an affiliate authorized to sell OZARK TRAIL products. Respondent is passing off as Complainant or an affiliate and to the extent that Respondent actually sells the goods advertised it is in direct competition with Complainant.  Using a confusingly similar domain name to impersonate and pass off as and sell the same types of products as a complainant does not qualify 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 alleges that by offering site visitors the opportunity to set up an account, Respondent attempts to collect consumers' personal and financial information. One of the pages on each of Respondent's websites invites the visitor to set up an account by furnishing the visitor's name, phone number and street and email addresses. Phishing is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. Respondent's website falls short of this. While it is possible that Respondent may at some time in the future engage in phishing with a customer, there is no evidence that phishing is presently occurring. In the absence of such evidence the Panel declines to find phishing in this case.

 

The information furnished to Forum by the registrar lists the named Respondents as the registrants of the domain names. Those names bear no resemblance to the domain names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a name other than 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, and in cases where no response has been filed, 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 names when the identifying information provided by WHOIS was unrelated to the domain names 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 the Respondent has not been commonly known by the domain names.

 

Complainant has made its prima facie case. On the evidence discussed above, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

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 one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, 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 website, as described in Policy ¶ 4(b)(iv).  The evidence does not disclose whether Respondent is actually selling the products advertised on its websites or fraudulently representing that it does, collecting money from the customer and then not delivering the products. Regardless which scenario is present here, its 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).").

 

Next, as discussed above, Respondent is using the domain names to pass off as Complainant or an authorized affiliate. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph 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. 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 asserts that Respondent had at least constructive knowledge of Complainant and its OZARK TRAIL mark when it registered the domain names. UDRP panels almost universally decline to find bad faith based upon constructive knowledge and this Panel does as well.  The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain names in April 2022 and July 2023 (WHOIS printouts included in Complaint Exhibit 1 show creation dates). In order to pass off as Complainant or an affiliate on its websites and advertise exactly the same products that are advertised on Complainant's website, Respondent had to have had actual knowledge of Complainant and its mark. OZARK TRAIL is a unique, coined term that has no meaning apart from its association with Complainant. There would be no reason for any person selecting a domain name to choose these domain names except to target this Complainant. 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).

 

On August 21, 2023, Complainant's counsel sent a cease-and-desist demand to Respondent and followed up with a request for response on several occasions after that (copies of email correspondence included in Complaint Exhibit 11). Respondent did not reply to any of these communications. This is further evidence of bad faith registration and use. Bloomberg Finance L.P. v. Thomas Hampson / ClickTech Solutions Ltd., FA 1850421 (Forum Aug. 19, 2019) ("the Panel acknowledges that Respondent's failure to respond to Complainant's cease and desist letter supports a finding of bad faith, especially where, as in this case, the trademark in question has substantial goodwill and reputation.").

 

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).

 

DECISION

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 <ozarktrailtent.cc> and <ozarktrailtents.cc> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

April 1, 2024