DECISION

 

LTWHP, LLC v. Web Commerce Communications Limited / Client Care

Claim Number: FA2403002089751

 

PARTIES

Complainant is LTWHP, LLC ("Complainant"), represented by Sophie Edbrooke of Gerben Perrott, PLLC, District of Columbia, USA. Respondent is Web Commerce Communications Limited / Client Care ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lottoausale.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 21, 2024; Forum received payment on March 21, 2024.

 

On March 25, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <lottoausale.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@lottoausale.com. Also on March 26, 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 16, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant, LTWHP, LLC, operates a retail store selling LOTTO-branded clothing, accessories, sporting foods and footwear. Complainant has rights in the LOTTO mark based on registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,347,644, registered on May 2, 2000). The disputed domain name is confusingly similar to Complainant's LOTTO mark, incorporating the mark in its entirety, and merely adding the geographic indicator "AU" and the descriptive word "sale."

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LOTTO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but rather to pass itself off as Complainant in an effort to defraud Internet users.

 

iii) Respondent registered and uses the disputed domain name in bad faith. The disputed domain name serves as nothing more than a means for infringement or outright fraud because it exists solely to attract Internet traffic to steal visitors' financial and personal information. If Respondent has stopped using the disputed domain name as a phishing site, it does not negate the bad faith of Respondent.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on January 5, 2022.

 

2. Complainant has established rights in the LOTTO mark based on registration with the USPTO (e.g., Reg. No. 2,347,644, registered on May 2, 2000).

 

3. The disputed domain name resolved to a website from July 11, 2023 that had product listings in connection with the LOTTO marks.

 

4. The disputed domain name currently remains inactive.

 

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 asserts rights in the LOTTO mark through its registration with the USPTO (e.g., Reg. No. 2,347,644, registered on May 2, 2000). Registration of a mark with the USPTO sufficiently demonstrates rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its registration with the USPTO, the Panel finds that Complainant has established rights in the LOTTO mark under Policy ¶ 4(a)(i).

 

Complainant then argues that the disputed domain name <lottoausale.com> is confusingly similar to the LOTTO mark as it incorporates the entire LOTTO mark, merely adding the geographic indicator "AU" and the descriptive word "sale." The addition of a descriptive term may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Disney Enters., Inc. v. Artmidia Comunicacao Visual Criacao E Arte Ltda., FA 603590 (Forum Jan. 16, 2006) ("The term 'disneylandia' is the Portuguese translation of the DISNEYLAND mark, and Complainant holds such a trademark for this term in Brazil.  Therefore, the <disneylandia.com> and <disneylandia.net> domain names are confusingly similar to Complainant's mark."). Thus, the Panel finds the disputed domain name is confusingly similar to Complainant's LOTTO mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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").

 

Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LOTTO mark. When response is lacking, previous Panels have looked to a domain name's WHOIS information to determine whether a Respondent is commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 1919893 (Forum Dec. 16, 2020) ("Here, the WHOIS information lists "er nong wu" as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)."). Additionally, lack of authorization to use another's trademark may further demonstrate that a Respondent lacks rights in a domain name under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as "Operi Manaha," and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information of record identifies "Web Commerce Communications Limited / Client Care" as the registrant of the disputed domain name, and nothing in the record suggests Complainant authorized Respondent's use of the LOTTO mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).

 

Complainant also contends that Respondent fails to use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, as Respondent resolved the disputed domain name to a webpage that had product listings in connection with the LOTTO marks. Such use generally does not constitute either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant's own financial news services in the Russian language); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent's use of the disputed domain to sell products related to Complainant without authorization "does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."). Complainant provides an archived historical homepage of the disputed domain name from July 11 2023 that had product listings in connection with the LOTTO marks. The Panel finds that Respondent's use of the mark on its site to pass itself off as Complainant and purporting to sell Complainant's goods is not sufficient to establish a connection with a bona fide offering of goods or services. Therefore, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent resolved the disputed domain name to a website from July 11, 2023 that had product listings in connection with the LOTTO marks thereby attempting to pass itself off as Complainant and purported to offer Complainant's LOTTO-branded products. Such use may demonstrate bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant's business by diverting Internet users from Complainant's website to Respondent's website where it offered competing printer products); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent's use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see additionally 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."). As previously noted, Complainant provides evidence that Respondent resolved the disputed domain name to a website passing off as Complainant by displaying product listings in connection with the LOTTO marks. Therefore, the Panel finds Respondent's bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iii) and (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 <lottoausale.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: April 18, 2024