DECISION

 

Whistlindiesel, LLC v. Phuong Nguyen

Claim Number: FA2403002088347

 

PARTIES

Complainant is Whistlindiesel, LLC ("Complainant"), represented by Jeffrey S. Habib of Hooker & Habib, P.C., Pennsylvania, USA. Respondent is Phuong Nguyen ("Respondent"), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <whistlindiesel.shop> ("Domain Name"), registered with NameSilo, LLC.

 

PANEL

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

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 14, 2024; Forum received payment on March 14, 2024.

 

On March 14, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <whistlindiesel.shop> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 14, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 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@whistlindiesel.shop. Also on March 14, 2024, 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 April 5, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 owns and operates a series of online portals (website, Instagram page, YouTube channel, Facebook page) where it promotes activities related to modified motor vehicles. Complainant or a predecessor in title has provided these services since 2017 under the  WHISTLINDIESEL mark. Complainant has rights in the WHISTLINDIESEL mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 6,275,623, registered on February 23, 2021). Respondent's <whistlindiesel.shop> domain name is identical to Complainant's WHISTLINDIESEL  mark as it wholly incorporates the mark while adding the ".shop" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <whistlindiesel.shop> domain name.  Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its WHISTLINDIESEL mark in the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a website ("Respondent's Website") where it pass itself off as Complainant by reproducing Complainant's WHISTLINDIESEL mark and various copyrighted images and devices from Complainant's Instagram and Facebook page for the purposes of offering counterfeit merchandise purportedly associated with Complainant.

 

Respondent registered and uses the <whistlindiesel.shop> domain name in bad faith.  Respondent uses the confusingly similar nature of the Domain Name to disrupt Complainant's business by impersonating Complainant. Respondent uses the Domain Name to confuse internet users by resolving to a webpage that purports to offer merchandise connected to Complainant goods but is used to commit fraud by offering counterfeit WHISTLINDIESEL merchandise.  Furthermore, Respondent registered the Domain Name with actual knowledge of Complainant's rights in the WHISTLINDIESEL mark evidenced by the use of Complainant's mark and copyrighted material on the Respondent's Website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the WHISTLINDIESEL mark.  The Domain Name is identical to Complainant's WHISTLINDIESEL mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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 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

Complainant has rights in the WHISTLINDIESEL mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 6,275,623, registered on February 23, 2021).  Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the Domain Name <whistlindiesel.shop> is identical to the WHISTLINDIESEL mark as it merely adds the ".shop" gTLD to Complainant's wholly incorporated WHISTLINDIESEL mark.  The addition of a gTLD is insufficient to distinguish a domain from a mark under Policy ¶ 4(a)(i).  See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the ".us" ccTLD and the ".com" gTLD);  see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) ("The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the WHISTLINDIESEL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS information of record lists " Phuong Nguyen " as the registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to the Respondent's Website which, through the reproduction of the WHISTLINDIESEL mark and copyrighted images from the Complainant's Instagram and Facebook pages, passes itself off as an official website of the Complainant for the purpose of offering for sale counterfeit merchandise relating to the Complainant's services.  The use of a confusingly similar domain name to resolve to a webpage that purports to offer unauthorized or counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) ("The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.").  See also Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name (April 1, 2023), Respondent had actual knowledge of Complainant's WHISTLINDIESEL mark since the Respondent's Website passes itself off as an official website of the Complainant including reproducing the Complainant's WHISTLINDIESEL mark and copyrighted material. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the WHISTLINDIESEL mark and use it to redirect visitors to a website selling counterfeit WHISTLINDIESEL products under the WHISTLINDIESEL mark other than to take advantage of Complainant's reputation in the WHISTLINDIESEL mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's WHISTLINDIESEL mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that passes off as an official website of the Complainant and offers counterfeit WHISTLINDIESEL merchandise. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (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)."). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) 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."). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <whistlindiesel.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: April 4, 2024