DECISION

 

Athletic Propulsion Labs LLC v. Jody Lawson

Claim Number: FA2409002116332

 

PARTIES

Complainant is Athletic Propulsion Labs LLC ("Complainant"), represented by Matthew D. Witsman of Foley & Lardner LLP, Illinois, USA. Respondent is Jody Lawson ("Respondent"), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <athleticpropulsionlabswholesale.shop>, registered with Web Commerce Communications Limited dba WebNic.cc.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 19, 2024; Forum received payment on September 19, 2024.

 

On September 20, 2024, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <athleticpropulsionlabswholesale.shop> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 September 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@athleticpropulsionlabswholesale.shop. Also on September 20, 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 October 11, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 contends in part as follows:

 

Complainant Athletic Propulsion Labs LLC was founded in March 2009 and has since created revolutionary products symbolizing the intersection of luxury and athletic performance. APL is globally recognized as a world leader in both men's and women's athletic footwear and apparel.

 

Complainant has rights in the ATHLETIC PROPULSION LABS mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") as well as other registrations worldwide.

 

Respondent's <athleticpropulsionlabswholesale.shop> domain name is confusingly similar to Complainant's ATHLETIC PROPULSION LABS trademark. Respondent incorporates Complainant's ATHLETIC PROPULSION LABS mark in the domain name and merely adds the term "wholesale" and the ".shop" generic top-level domain.

 

Respondent lacks rights or legitimate interests in the <athleticpropulsionlabswholesale.shop> domain name as Respondent is not commonly known by such name. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to impersonate Complainant by mimicking Complainant's genuine website to fraudulently offer Complainant's products for sale at steep discounts. Respondent and its associates are neither a licensees nor affiliates of Complainant.

 

Respondent registered and used <athleticpropulsionlabswholesale.shop> in bad faith to impersonate Complainant to attract customers so that Respondent can defrauded such customers out of funds. Respondent use of the domain name constitutes bad faith under the Policy. Respondent should have been aware of Complainant's trademark actually or constructively and had actual knowledge of Complainant's mark when it registered the at-issue domain name. Respondent had actual knowledge of Complainant's rights in the ATHLETIC PROPULSION LABS mark due to its longstanding use and goodwill in the luxury athletic and footwear field of commerce. Respondent also had constructive notice of Complainant's marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the ATHLETIC PROPULSION LABS trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at-issue domain name after Complainant acquired rights in the APL trademarks.

 

The at-issue domain name addresses a website that mimics Complainant's genuine website and enables Respondent's to defraud third parties.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's multiple USPTO registrations for ATHLETIC PROPULSION LABS as well as its other national trademark registrations for such mark worldwide are each sufficient to demonstrate Complainant's rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

Respondent's <athleticpropulsionlabswholesale.shop> domain name contains Complainant's ATHLETIC PROPULSION LABS trademark followed by the suggestive term "wholesale" with all followed by the ".shop" top-level. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish such domain name from Complainant's ATHLETIC PROPULSION LABS mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademarks 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. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.").

 

The WHOIS information for the at-issue domain name identifies "Jody Lawson" as the domain name's registrant and the record before the Panel contains no evidence that tends to prove that the domain name's registrant is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by <athleticpropulsionlabswholesale.shop> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent's <athleticpropulsionlabswholesale.shop> domain name addresses a website that mimics Complainant's genuine website. Respondent thereby attempts to pass itself off as Complainant and there purportedly offers to sell Complainant's products a steep discount. Respondent's domain name and website were created to enable Respondent to defraud third parties. Therefore, Respondent failed to use the domain name to promote a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See 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)."); see also, Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) ("On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fid  offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).").

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in <athleticpropulsionlabswholesale.shop>.

 

Registration and Use in Bad Faith

As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain name in bad faith pursuant to the Policy.

 

As mentioned above, Respondent uses the at-issue domain name to address a website mimicking Complainant's genuine website and purportedly selling Complainant's products at a steep discount. Respondent's <athleticpropulsionlabswholesale.shop> website is intended to be a platform to allow Respondent to swindle third parties who mistakenly believe they are dealing with Complainant, or an associate of Complainant, and purchasing Complainant's products at a discount when in fact they are doing neither. Such use of the confusingly similar at-issue domain name shows Respondent's bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant's business); see also, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) ("Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the ATHLETIC PROPULSION LABS mark when it registered <athleticpropulsionlabswholesale.shop> as a domain name. Respondent's actual knowledge is evident given the notoriety of Complainant's trademark; given Respondent's inclusion of the suggestive term "wholesale" in the domain name; and given that the domain name addresses a website mimicking Complainant's genuine website. Respondent's registration of <athleticpropulsionlabswholesale.shop> with knowledge of Complainant's trademark rights further demonstrates Respondent's bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).

 

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

 

 

 

Paul M. DeCicco, Panelist

Dated: October 14, 2024