DECISION
Walmart Apollo, LLC v. Zeeshan Arain
Claim Number: FA2411002124304
PARTIES
Complainant is Walmart Apollo, LLC ("Complainant"), represented by Fatima Y. Kassem of Brooks Kushman P.C., Michigan, USA. Respondent is Zeeshan Arain ("Respondent"), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <penplusgear.com>, registered with Tucows Domains 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.
James Bridgeman SC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 11, 2024; Forum received payment on November 11, 2024.
On November 12, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <penplusgear.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@penplusgear.com. Also on November 12, 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 4, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant claims rights in the PEN+GEAR trademark established by its ownership of the portfolio of United States registered trademarks described below and extensive use of the mark by Complainant in the WALMART retail chain of hypermarkets, discount department stores, and grocery stores and online.
Complainant presents extensive information about Walmart Inc. which it submits was founded in 1962 in Rogers, Arkansas and has grown to have approximately 240 million customers and members visit more than 10,500 stores and numerous eCommerce websites in 20 countries every week.
Referring to the evidence of its ownership of the portfolio of trademark registrations described below, Complainant submits that it has been using its PEN+GEAR trademark in United States commerce since at least as early as 2017.
Complainant claims that sells its PEN+GEAR branded goods online and via Walmart Inc.'s downloadable mobile application which is available on the Apple App Store and Google PlayStore and has been downloaded from the Google Play Store over 50 million times and has 10.5 million ratings at the Apple App Store.
Complainant firstly alleges that the disputed domain name <penplusgear.com> is confusingly similar to its registered trademark PEN+GEAR as it fully incorporates the mark, merely substituting the symbol "+" with the word "plus".
Complainant submits that the substitution does not differentiate the disputed domain name from the PEN+GEAR trademark, thereby resulting in a confusingly similar use. See, e.g., NY and Co IP, LLC v. Carolina Rodrigues, FA 1969021 (Forum Nov. 26, 2021) ("Abbreviating a trademark and/or replacing a symbol with its corresponding word is generally insufficient to distinguish a domain name from a trademark under Policy 4(a)(i).").
Complainant secondly alleges that Respondent does not have any rights or legitimate interests in the disputed domain name arguing that
· Respondent is not and has not been commonly known by the disputed domain name;
· upon information and belief, Respondent's identity is not disclosed on the WHOIS data for the disputed domain name, and the WHOIS for the disputed domain does not give any other indication that Respondent is commonly known by the disputed domain name; and panels established under the Policy have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name;
· Complainant has not authorized or licensed Respondent to use the PEN+GEAR trademarks;
· upon information and belief, Respondent has neither applied for, nor registered, trademarks or trade names for PEN+GEAR or variations thereof;
· Respondent is not affiliated with Complainant and Respondent's use of the PEN+GEAR mark in the disputed domain name is not unauthorized;
· Respondent's sole apparent use of the disputed domain name is to attract Internet users searching for PEN+GEAR goods in order to trick and divert them to purchase goods from Respondent's website, and such use does not give rise to rights or legitimate interests under the Policy;
· referring to screen capture of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, Complainant asks this Panel to note that the website is falsely presented as the official website for Complainant's PEN+GEAR brand and products , which does not establish a legitimate interest; citing, eBay Inc. v. Mohd. mohd.Danish / westernenterprises, FA1756923 (Forum Dec. 1, 2017) (finding lack of rights or legitimate interests under similar circumstances in which the disputed domain name was being used for an online retail website displaying the EBAY mark in a font and color scheme similar to that used by the complainant, with a website design similar to that of the complainant's website, and in which the site was being used for a phishing scheme aimed at gathering information frorm consumers);
· Respondent's use of the confusingly similar disputed domain name to impersonate and pass off as, and sell the same types of products by impersonating Complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Complainant thirdly alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent had actual knowledge of Complainant's rights in the PEN+GEAR trademark when Respondent registered the disputed domain name.
Complainant argues that this is evident given the PEN+GEAR brand's notoriety and given Respondent's use of the trademark laden domain name to pass itself off as Complainant and offer merchandise for sale similar to Complainant's offering. Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA1031703 (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).
Furthermore, Complainant submits that there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively. See Samsonite Corp. v. Colony Holding, FA 94313 (Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Complainant argues that Respondent was reasonably aware of Complainant's rights in its PEN+GEAR trademark from Complainant's registrations for the PEN+GEAR trademark. Thus, Respondent's use of Complainant's PEN+GEAR mark in the disputed domain name, in defiance of Complainant's rights, constitutes bad faith.
Additionally Complainant contends that Respondent intentionally and willfully misrepresented to the Registrar that the registration of the disputed domain name did not interfere with or infringe upon the rights of any third parties. Complainant argues that this type of misrepresentation has been held to constitute bad faith, because under Policy ¶ 2, a domain name registrant represents and warrants to the domain name registrar that to the registrant's knowledge, "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party." See Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc., FA93636 (Forum Mar. 13, 2000) (under paragraph 2 of the Policy, a domain name registrant represents and warrants to the domain name registrar that to the registrant's knowledge, "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party"). Here, Respondent has registered the disputed domain name that uses and fully incorporates Complainant's PEN+GEAR mark, without Complainant's authorization. Thus, Respondent's registration of the disputed domain name is a clear violation of the Policy, and Respondent has therefore acted in bad faith.
Referring to the exhibited website to which the disputed domain name resolves, which displays advertisements and links to unrelated third-party commercial websites, Complainant argues that Respondent presumably derives click-through revenue from these links. Complainant adds that such use of the disputed domain name to host links to unrelated commercial websites for commercial gain is evidence of bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the domain name at issue to host a variety of hyperlinks, unrelated to the complainant's business, through which the respondent presumably commercially gained).
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is a retailer office and school suppplies branded with the PEN+GEAR trademark for which it holds a portfolio of trademarks registered in the United States of America including :
· United States registered trademark PEN+GEAR, registration number 5351828, registered on the Principal Register on December 5, 2017, for goods in international class 21;
· United States registered trademark PEN+GEAR, registration number 5352231, registered on the Principal Register on December 5, 2017 for goods in international class 20; and
· United States registered trademark PEN+GEAR, registration number 5352232,registered on the Principal Register on December 5, 2017 for goods in international class 16.
The disputed domain name was registered on July 4, 2024, and resolves to a website that purports to impersonate Complainant offering competing office and school supplies and has links to third party websites including offerings of a casino and the services of an astrologer and psychic.
There is no information available about Respondent except for that which is provided in the Complaint, as amended, the Registrar's WHOIS for the disputed domain name and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding. Respondent availed of a privacy service to conceal the identity of the registrant on the published WHOIS.
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 provided uncontested convincing evidence of its rights in the PEN+GEAR mark established the ownership of the abovementioned portfolio of trademark and service mark registrations and goodwill it has established in the mark through use on its office and school supplies business since 2017.
The disputed domain name <penplusgear.com> is composed of the principal elements of Complainant's PEN+GEAR registered trademark, albeit with the word "plus" substituted for the symbol "+", together with the generic Top Level Domain extension <.com>.
The word "plus" is effectively a transcription, or symbol-to-text conversion. As the symbol and replacement word "plus" are semantic equivalents, the disputed domain name is effectively identical to, and certainly confusingly similar to Complainant's mark. The disputed domain name therefore contains Complainant's mark in its entiretly.
It is well established that it is sufficient for a complainant to establish that the domain name at issue contains the mark relied upon in its entirety, to satisfy the first element of the test in Policy ¶ 4(a)(i).
Furthermore, in the context of this Complaint, the TLD extension <.com> within the disputed domain name may be ignored for the purposes of comparing the mark and the disputed domain name, because it would be considered by Internet users to be a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the PEN+GEAR mark in which Complainant has rights and Complainants have therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed submissions above, supported by the evidence which has been annexed to the Complaint, as amended.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant's registered trademark PEN & GEAR is clearly recognizable as the only distinctive element within the disputed domain name.
In its submissions and the evidence adduced in the annexes to the Complaint, Complainant provides extensive details of the commercial reputation of Walmart Inc. which is a famous retail enterprise. Furthermore Complainant submits that its PEN+GEAR branded products are offered for sale on "Walmart app". However, Complainant does not provide details of its relationship with the global organization, and in fact "Walmart" and Complainant are conflated in the submissions in the Complaint.
More importantly, while Complainant relies on its rights and reputation in its registered trademark PEN & GEAR mark it largely bases its submissions and evidence on the reputation and goodwill of WALMART Inc.
Nonetheless this Panel accepts that Complainant's evidence that its goods are offered for sale on the WALMART app.
PEN & GEAR is a distinctive mark; and it is most improbable that the registrant of the disputed domain name was unaware of Complainant's mark when the almost identical disputed domain name was chosen and registered. The subsititution of the "+" symbol with the word "plus" underlines the considered intention of the registrant to create an association with Complainant.
On the balance of probabilities, therefore, this Panel finds that the disputed domain name was in fact chosen and registered with Complainant's mark in mind with the intention of taking predatory advantage of Complainant's business and its rights and goodwill in the PEN+GEAR mark.
The uncontested evidence in the form of the screen capture of the content of the website to which the disputed domain name resolves confirms this conclusion.
The exhibited screen capture shows that Respondent is purporting to offer office and school supplies for sale, and in fact expressly claims that Respondent's website is the "PEN+GEAR official website."
In so doing Respondent is impersonating Complainant and purporting to claim that Internet users visiting Respondent's website are in fact visiting Complainant's official site.
For the above reasons, this Panel is satisfied, and finds, that Respondent is using the disputed domain name in bad faith intending to attract and confuse Internet users and cause them to divert their Internet traffic intended for Complainant and misdirect it to Respondent's website by creating confusion as to the source, sponsorship, affiliation, or endorsement of Respondent's web site, which constitutes bad faith for the purposes of the Policy.
Furthermore Respondent has caused, permitted, or allowed links to third party websites on the exhibited website including an advertisement for astrological and psychic services, as well as gambling services. Such use of Complainant's mark within the address of Respondent's website, in itself, constitutes bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <penplusgear.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________________________
James Bridgeman SC, Panelist
Dated: December 4, 2024
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