Backcountry.com, LLC v. Kbhdey Ryudfc / Ygtyo Hdeyh
Claim Number: FA2205001998281
Complainant is Backcountry.com, LLC (“Complainant”), represented by Craig A. Beaker of Holland & Hart LLP, Colorado, USA. Respondent is Kbhdey Ryudfc / Ygtyo Hdeyh (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <salestoic.com> and <outletstoic.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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2022. The Forum received payment on May 27, 2022.
On May 31, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <salestoic.com> and <outletstoic.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. 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 June 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2022 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@salestoic.com, postmaster@outletstoic.com. Also on June 2, 2022, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the 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.”
Complainant has shown that both of the domain names were registered through the same registrar “Name.com, Inc.,” and both were initially registered using the same privacy service, identifying Respondent as “Whois Agent” of “Domain Protection Services, Inc.” located in Denver, Colorado. There are also similarities between the contact details provided by Respondent to the Registrar for each of the domain names, including: identical phone numbers “+852.51234567”; registrant names formed with an incomprehensible and seemingly random combination of letters; addresses in Hong Kong, China; and email addresses utilizing the domain name “163.com.” In addition, the WHOIS records for the domain names each display name servers with “NS.CLOUDFLARE.COM.” On information and belief, Respondent uses reverse proxy, pass-through security services offered by Cloudflare in connection with the domain names. Moreover, each of the domain names resolves to a website with virtually identical content advertising STOIC-branded merchandise for sale, in an attempt to impersonate Complainant and defraud Complainant’s customers. Each of the domain names also uses an identical naming convention, namely, “STOIC” combined with a generic term associated with retail businesses (“sale” and “outlet”). Finally, the domain names were registered within just one month of each other.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Accordingly, this decision refers to Kbhdey Ryudfc / Ygtyo Hdeyh as “Respondent”.
A. Complainant
Complainant, Backcountry.com, LLC, is a prominent retailer of apparel and accessories, bags, outdoor products, camping and hiking equipment, sporting goods and other related products in the apparel and outdoor recreation industries. It has rights in the STOIC mark through registrations with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”). Respondent’s <salestoic.com> and <outletstoic.com> domain names are identical or confusingly similar to Complainant’s STOIC mark.
Respondent lacks rights and legitimate interests in the <salestoic.com> and <outletstoic.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its STOIC mark in the domain names. Respondent does not use the domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead attempts to pass itself off as Complainant.
Respondent registered the <salestoic.com> and <outletstoic.com> domain names in bad faith with actual knowledge of Complainant’s rights in the STOIC mark and uses them in bad faith to pass itself off as Complainant while creating a likelihood of confusion for users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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”).
Complainant has shown that it has rights in the STOIC mark through numerous registrations, including with the USPTO (e.g. Reg. No. 4,303,136, registered on March 19, 2013). The Panel finds Respondent’s <salestoic.com> and <outletstoic.com> domain names to be confusingly similar to Complainant’s STOIC mark as they incorporate the mark in its entirety and add the generic or descriptive words “sale” or “outlet”, which are insufficient to distinguish the domain names from the mark, along with the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <salestoic.com> and <outletstoic.com> domain names were registered on April 7, 2022 and May 6, 2022 respectively. They each resolve to an active website that copies content from Complainant’s website “www.backcountry.com” and displays Complainant’s registered STOIC mark, while purporting to offer Complainant’s products for sale without authorisation.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <salestoic.com> and <outletstoic.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s STOIC mark when Respondent registered the <salestoic.com> and <outletstoic.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <salestoic.com> and <outletstoic.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 7, 2022
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