DECISION

 

Niteo Products, LLC v. fan qiang

Claim Number: FA2411002123724

 

PARTIES

Complainant is Niteo Products, LLC ("Complainant"), represented by Neil Peluchette of Taft Stettinius & Hollister LLP, Indiana, USA. Respondent is fan qiang ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theozium.com>, registered with Name.com, Inc.

 

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 November 6, 2024; Forum received payment on November 6, 2024.

 

On November 7, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <theozium.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 November 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@theozium.com. Also on November 8, 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 December 2, 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 is the owner of OZIUM trademarks which date back to at least as early as October 30, 1945. Complainant has used the OZIUM trademarks continuously since that date. Complainant also owns the domain name, www.ozium.com, and has since at least as early as April 3, 2002.

 

Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights. Complainant's holds multiple trademark registrations for its OZIUM mark worldwide including registrations with the USPTO. The at-issue domain name incorporates such mark while adding a generic term and top-level domain name which are not sufficient to distinguish a domain name from a protected mark.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized by Complainant to use the OZIUM mark and has no legitimate rights in OZIUM, the OZIUM trademarks, any equivalents of such mark, or the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial purpose. Instead, Respondent uses the domain name to attempt to pass off as Complainant and to reference what claims to be the "Official Website" of Complainant. Respondent's website mimics Complainant's genuine website. Impersonation of a complainant in a disputed domain name's associated webpage may not qualify as either a bona fide offer of goods and services, nor is it a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) or (iii). Via the website, Respondent purports to offer for sale products identical to Complainant at heavily inflated prices, in competition with Complainant's goods, directly infringing Complainant's OZIUM trademark. Respondent may also be offering the sale of Complainant's goods to scam consumers out of money. Respondent's website and domain name create a false impression of association with Complainant. Further, Respondent was not commonly known by the domain name at the time it registered the domain name.

 

Respondent registered and used the at-issue domain name in bad faith. Complainant's trademark was used and registered well before Respondent registered <theozium.com> and Respondent failed to take care that it was not violating Complainant's rights in registering the domain name per the registration agreement. Respondent had actual knowledge of Complainant's rights in OZIUM at the time it registered <theozium.com>. Respondent's registration and use of the domain name, in direct competition with Complainant's OZIUM mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Respondent uses the OZIUM trademark including the same designs and variations thereof, to attract consumers to its website to profit off the sale of heavily inflated products. Such use is likely to cause confusion among consumers, creating an impression through the domain name that Respondent is somehow affiliated, sponsored or licensed by Complainant where no such affiliation or sponsorship exists in violation of Policy ¶ 4(b)(iv).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the OZIUM 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 OZIUM trademark.

 

Respondent uses the at-issue domain name to address a website that mimics Complainant's genuine website so as to be perceived as being affiliated with or endorsed by Complainant, and that purport to sell OZIUM branded products.

 

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.

 

Any of Complainant's registrations for its OZIUM marks with the USPTO or with any other bona fide trademark agency worldwide demonstrates Complainant's 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 trademark authority).

 

Respondent's <theozium.com> domain name consists of Complainant's OZIUM mark prefixed by the article "the" with all followed by the ".com" top-level. The differences between Complainant's trademark and the at-issue domain name fail to distinguish the Complainant's trademark from Respondent's domain name. Therefore, the Panel concludes that Respondent's <theozium.com> domain name is confusingly similar to a mark in which Complainant has rights 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.")

 

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). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

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. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <theozium.com> shows that "fan qiang" is its registrant and there is no evidence in the record indicating that Respondent is in anyway known by the <theozium.com> domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). 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 used the at-issue domain name to address a website that might pass for being sponsored by Complainant. There, Respondent appears to have offered Complainant's OZIUM products for sale without authority to do so. Respondent's use of the domain name to pose as Complainant and offer Complainant's goods for sale without authority to do so is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant").

 

Given the forgoing, Respondent's lacks rights and lacks legitimate interests in respect <theozium.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy.

 

Respondent has used the at-issue domain name to address a website appearing to be endorsed by or otherwise associated with Complainant as it mimics Complainant's official website and offers Complainant's OZIUM products for sale. Using the confusingly similar <theozium.com> domain name in such manner is disruptive to Complainant's business and falsely indicates that there is a sanctioned relationship between Complainant and Respondent. Such use of the domain name thus demonstrates Respondent's bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) ("Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)."); see also, 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).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the OZIUM mark when it registered <theozium.com> as a domain name. Respondent's prior knowledge is apparent given OZIUM's fame and long term use and given Respondent's use of the domain name to pose as Complainant and offer Complainant's products for sale. Respondent's registration and use of <theozium.com> with knowledge of Complainant's trademark rights in OZIUM further shows Respondent's bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, 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).

 

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 <theozium.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: November 30, 2024