DECISION

 

Moscot Management LLC v. Paul Holzman / Peter Schweitzer / Mathias Achen / Steffen Loewe / Marie Frueh / Client Care / Web Commerce Communications Limited / Lasher Angela

Claim Number: FA2404002092002

 

PARTIES

Complainant is Moscot Management LLC ("Complainant"), represented by Brett E. Lewis of Lewis & Lin LLC, New York, USA. Respondent is Paul Holzman / Peter Schweitzer / Mathias Achen / Steffen Loewe / Marie Frueh / Client Care / Web Commerce Communications Limited / Lasher Angela ("Respondent"), Multiple Locations.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <moscot-colombia.com.co>, <moscot-magyarorszag.com>, <moscotargentinaoutlet.com>, <moscotaustraliasale.com>, <moscotcanadasale.com>, <moscotdanmarkdk.com>, <moscotgafasespana.com>, <moscotirelandstore.com>, <moscotmalaysiastore.com>, <moscotmexicomx.com>, <moscotnorgesalg.com>, <moscotnzsale.com>, <moscotphilippinesonline.com>, <moscotpolskasklep.com>, <moscotportugallojaonline.com>, <moscotsaledeutschland.com>, <moscotschweizoutlet.com>, <moscotsingaporesale.com>, <moscotturkiyetr.com>, <moscotuksale.com>, <moscotwien.com>, <moscotwinkelbelgie.com>, <moscotwinkelnederland.com> and <negozimoscotitalia.com> (collectively "Domain Names"), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Web Commerce Communications Limited dba WebNic.cc; and 1API GmbH.

 

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 April 5, 2024; Forum received payment on April 5, 2024.

 

Between April 5 and April 8, 2024, each of the Registrars confirmed by e-mail to Forum that the <moscot-colombia.com.co>, <moscot-magyarorszag.com>, <moscotargentinaoutlet.com>, <moscotaustraliasale.com>, <moscotcanadasale.com>, <moscotdanmarkdk.com>, <moscotgafasespana.com>, <moscotirelandstore.com>, <moscotmalaysiastore.com>, <moscotmexicomx.com>, <moscotnorgesalg.com>, <moscotnzsale.com>, <moscotphilippinesonline.com>, <moscotpolskasklep.com>, <moscotportugallojaonline.com>, <moscotsaledeutschland.com>, <moscotschweizoutlet.com>, <moscotsingaporesale.com>, <moscotturkiyetr.com>, <moscotuksale.com>, <moscotwien.com>, <moscotwinkelbelgie.com>, <moscotwinkelnederland.com> and <negozimoscotitalia.com> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars has verified that Respondent is bound by their 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 April 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@moscot-colombia.com.co,  postmaster@moscot-magyarorszag.com,  postmaster@moscotargentinaoutlet.com,  postmaster@moscotaustraliasale.com,  postmaster@moscotcanadasale.com,  postmaster@moscotdanmarkdk.com,  postmaster@moscotgafasespana.com,  postmaster@moscotirelandstore.com,  postmaster@moscotmalaysiastore.com,  postmaster@moscotmexicomx.com,  postmaster@moscotnorgesalg.com,  postmaster@moscotnzsale.com,  postmaster@moscotphilippinesonline.com,  postmaster@moscotpolskasklep.com,  postmaster@moscotportugallojaonline.com,  postmaster@moscotsaledeutschland.com,  postmaster@moscotschweizoutlet.com,  postmaster@moscotsingaporesale.com,  postmaster@moscotturkiyetr.com,  postmaster@moscotuksale.com,  postmaster@moscotwien.com,  postmaster@moscotwinkelbelgie.com,  postmaster@moscotwinkelnederland.com, and postmaster@negozimoscotitalia.com.  Also on April 11, 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 May 2, 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 Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has implicitly alleged that the named entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."  

 

The Panel considers it likely, on the balance of probabilities, that all of the registrants for the Domain Names are related because: (1) the Domain Names are all similar variants of Complainant's MOSCOT mark and (2) 21 of the Domain Names ("Active Domain Names") resolve to essentially identical websites ("Respondent's Websites"). Respondent's Websites feature copyrighted images of the Complainant's products and purport to offer counterfeit or unauthorized versions of Complainant's products for sale at discounted prices with the main difference being the use of different currencies and languages. Indeed each of the Respondent's Websites is a near identical copy of the Complainant's website at www.moscot.com 3) With respect to the 3 domain names (<moscotnorgesalg.com>, <moscotsingaporesale.com> and <moscotwinkelnederland.com>), that do not resolve to an active website ("Inactive Domain Names"), these Domain Names have the same structure and were registered on the same day and with the same Registrar as some of the other Domain Names 

 

This evidence, in the Panel's opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that seven unconnected entities would register 24 similar domain names with the same 3 registrars and resolve 21 of them to essentially identical websites, with the Inactive Domain Names having the same Registrar and registration date as some of the Active Domain Names. In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as "Respondent" for this Decision.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a leading retailer and manufacturer of eyewear and related products. Complainant has rights in the MOSCOT mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,380,737 registered February 12, 2008) and similar registrations in other jurisdictions.  Respondent's Domain Names are confusingly similar to Complainant's MOSCOT mark because each domain name incorporates the MOSCOT mark in its entirety and adds generic or geographic terms and a generic or country-code top-level domain ("gTLD") or ("ccTLD").

 

Respondent has no legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed Respondent any rights in the MOSCOT mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names are inactive or resolve to webpages that display Complainant's mark and photos of Complainant's products, offering for sale counterfeit or unauthorized versions of Complainant's goods.

 

Respondent registered and uses the Domain Names in bad faith. Respondent registered the Domain Names in order to disrupt Complainant's business and divert customers for commercial gain. Respondent registered the Domain Names with actual knowledge of Complainant's rights in the MOSCOT mark given the content of the Respondent's Websites which actively copy the look and feel of Complainant's official website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the MOSCOT mark.  Each of the Domain Names is confusingly similar to Complainant's MOSCOT mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 MOSCOT mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 3,380,737 registered February 12, 2008). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See 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).").

 

The Panel finds that each of the Domain Names is confusingly similar to the MOSCOT mark as they each incorporate the entire MOSCOT mark while adding generic and/or geographic terms in various languages ("polska" and "outlet" for example) and a gTLD or ccTLD. Domain names which incorporate an entire mark are usually considered confusingly similar, while adding generic or geographic terms and a TLD is generally insufficient to create a distinction between a complainant's mark and a disputed domain name under Policy ¶ 4(a)(i).  See 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."); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis).

 

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 Names. 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 Names 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 Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the MOSCOT 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 "Paul Holzman / Peter Schweitzer / Mathias Achen / Steffen Loewe / Marie Frueh / Client Care / Web Commerce Communications Limited / Lasher Angela" as the registrants 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 Names in accordance with Policy ¶ 4(c)(ii).

 

The Active Domain Names resolve to the Respondent's Websites. Each of the Respondent's Websites, through the reproduction of the MOSCOT Mark, photographs of Complainant's products and references to the Complainant, falsely passes itself off as being associated with or authorized by Complainant for the purpose of selling counterfeit or unauthorized versions of Complainant's goods, in direct competition with Complainant's merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers counterfeit versions of a complainant's goods or unauthorized goods or services that directly compete with a complainant 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 Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant's MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). 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 Inactive Domain Names are presently inactive. Passively holding a disputed domain name does not establish rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii).  See TMP Int'l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) ("[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).").  Furthermore, in the present case the Panel considers it likely that the Inactive Domain Names are being held pending use in a similar manner to the Active Domain Names.

 

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 Names, February 2024, Respondent had actual knowledge of Complainant's MOSCOT mark since the Respondent's Websites pass themselves off as official websites of the Complainant for the purpose of selling counterfeit or unauthorized goods. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register 24 domain names that contain the MOSCOT mark and use 21 of them (with the remaining 3 domain names being inactively held) for websites selling goods in direct competition with the Complainant under the MOSCOT mark other than to take advantage of Complainant's reputation in the MOSCOT 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 Names in bad faith to create confusion with Complainant's MOSCOT Mark for commercial gain by using the confusingly similar Active Domain Names (the Inactive Domain names likely being passively held pending similar use) to resolve to websites offering counterfeit or unauthorized versions of Complainant's products in direct competition with the Complainant's products.  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 <moscot-colombia.com.co>, <moscot-magyarorszag.com>, <moscotargentinaoutlet.com>, <moscotaustraliasale.com>, <moscotcanadasale.com>, <moscotdanmarkdk.com>, <moscotgafasespana.com>, <moscotirelandstore.com>, <moscotmalaysiastore.com>, <moscotmexicomx.com>, <moscotnorgesalg.com>, <moscotnzsale.com>, <moscotphilippinesonline.com>, <moscotpolskasklep.com>, <moscotportugallojaonline.com>, <moscotsaledeutschland.com>, <moscotschweizoutlet.com>, <moscotsingaporesale.com>, <moscotturkiyetr.com>, <moscotuksale.com>, <moscotwien.com>, <moscotwinkelbelgie.com>, <moscotwinkelnederland.com> and <negozimoscotitalia.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: May 2, 2024