Niteo Products, LLC v. chenlong
Claim Number: FA2307002054196
Complainant is Niteo Products, LLC (“Complainant”), represented by Amy L. Wright, Esq., Victoria G. Sedinger, Esq., and Neil Peluchette, Esq. of Taft Stettinius & Hollister LLP, Indiana, USA. Respondent is chenlong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oziumus.com>, registered with Xin Net Technology Corporation.
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.
Steven M. Levy, Esq.as Panelist.
Complainant submitted a Complaint to Forum electronically on July 23, 2023; Forum received payment on July 23, 2023.
On July 26, 2023, Xin Net Technology Corporation confirmed by e-mail to Forum that the <oziumus.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 July 27, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of August 16, 2023 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@oziumus.com. Also on July 27, 2023, the Chinese and English 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 August 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue – Language of the Proceedings
The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and determine that English be the language of the proceedings. In support of its request, Complainant states that “Respondent created the website associated with the Domain Name in English … to target consumers in the United States.” It also states that “[t]he Contact Us page of the website uses a US telephone number…” The Panel notes Complainant’s submission of screenshots of Respondent’s website and these do appear entirely in the English language. Finally, the Forum has provided notice of these proceedings to the Respondent in both Chinese and English, yet the Respondent has not provided a Response or made any other submission in this case. In Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO Oct. 15, 2008) the Panel held that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”. In light of the fact that Respondent’s website displays content entirely in English and taking into account its default in this case and the delay and further expense that would be caused from requiring the Complainant to submit documents in Chinese, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.
A. Complainant
Founded in 1945, Complainant is a well-known manufacturer of air sanitizing and air deodorizing products sold under the coined trademark OZIUM. This mark is the subject of registrations at the United States Patent and Trademark Office (“USPTO”) (e.g., No. 1600287 registered on June 12, 1990) as well as registrations in other countries around the world such as China, Canada, Australia, Mexico, and the European Union. Complainant promotes its products through its website at <ozium.com> but products are only sold to end-use consumers through authorized retail channels such as Amazon.com, Wal-Mart, and Target. The OZIUM mark has been promoted at considerable expense and has acquired significant goodwill and public recognition. Respondent’s <oziumus.com> domain name, registered on June 7, 2023, is confusingly similar to the OZIUM mark as it only adds the letters “us” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby, Complainant has not authorized Respondent to use the OZIUM mark, and the domain name resolves to a website that diverts consumers, impersonates Complainant, uses copyrighted images of Complainant’s products, and claims to offer OZIUM products at heavily discounted prices.
Respondent registered and uses the disputed domain name in bad faith where it’s activities infringe the OZIUM mark in violation of Policy ¶ 2, it disrupts Complainant’s business by claiming to offer competing products, and it seeks commercial gain by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated its ownership of rights to the trademark OZIUM and the <oziumus.com> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the domain name as it is not commonly known thereby, it impersonates Complainant at the domain name’s resolving website by claiming to offer branded products for sale and deeply discounted prices; and
- Respondent registered and uses the disputed domain name in bad faith based on its disrupting of Complainant’s business by the sale of competing products in a manner that seeks commercial gain based on a likelihood of confusion.
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”).
Complainant claims rights in the OZIUM mark through numerous trademark registrations, including those at the USPTO and other trademark offices around the world. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Complainant provides copies of two of its USPTO registration certificates[i] and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the mark under Policy ¶ 4(a)(i).[ii]
Next, Complainant argues that the <oziumus.com> domain name is identical or confusingly similar to Complainant’s mark which is a coined term. The addition to a mark of a few letters or a geographic term, as well as a gTLD most often fails to sufficiently distinguish a disputed domain name from the mark under the Policy ¶ 4(a)(i) analysis. See, e.g., HDR Global Trading Limited v. Djoni Brave / CashBerry, FA 2031369 (Forum Mar 13, 2023) (Confusing similarity found where “[t]he disputed domain name <bitzibmex.com> incorporates Complainant's registered BITMEX and BMEX trademarks, adding a few letters and appending the ‘.com’ top-level domain.”); see also Christmas Place, Inc. v. Pham Dinh Nhut, FA 1597046 (Forum Feb. 16, 2015) (Finding confusing similarity where “[t]he disputed domain name incorporates Complainant’s LMCO mark in its entirety, merely adding the geographic term ‘tx’ (which stands for Texas), a hyphen, and the ‘.com’ generic top-level domain (‘gTLD’)”.) Here, the disputed domain name copies the entirety of the OZIUM mark, adds the letters “us” (an abbreviation for the United States), and appends the “.com” gTLD. As the mark is clearly recognizable and the letters “us” are a descriptive geographic term, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant asserts that Respondent is not using the <oziumus.com> domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use of such domain name. Rather, Respondent uses the disputed domain name to impersonate Complainant by displaying a website that diverts and deceives customers. Impersonation, or passing oneself off as a complainant and diverting users to a respondent’s webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 [UDRP] Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant provides screenshots of the resolving <oziumus.com> website which prominently displays the OZIUM graphic logo and many photographs of Complainant’s products. Below such photos are displayed one price in a grey, strikethrough font and a significantly lower price in a black font, all in the typical manner of indicating reduced prices. These photographs appear to have been copied from Complainant’s own <ozium.com> website or from the websites of its authorized retail partners, screenshots of which have also been submitted into evidence. The site further contains a page titled “Our Story” wherein both Complainant’s information, and Complainant’s private equity sponsor (Highlander Partners, L.P.), are detailed throughout. Finally, the site displays the footer “© 2023 Oziumus LLC.” From this evidence, the Panel finds support for the claim that Respondent is “directly infringing Complainant’s OZIUM Trademarks. Or, even worse, offers the sale of Complainant’s goods to scam consumers out of money, all while assuming the identity of Complainant.” Respondent has not filed a Response or made any other submission in this case. Thus, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that there is no evidence of Respondent using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or of its making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also argues that Respondent does not have rights or legitimate interests in the <oziumus.com> domain name because Respondent is not authorized to use Complainant’s OZIUM mark and is not commonly known by the disputed domain name. Panels have routinely held that WHOIS information may be considered when determining whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); See, e.g., Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under [UDRP] Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information for the <oziumus.com> domain name, as stated in the screenshots submitted into evidence by Complainant as well as in the Registrar verification email to the Forum, lists the registrant as “chenlong”” and Respondent has not participated in this case to claim that it is known otherwise. Therefore, the Panel has no evidence upon which to find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
For the reasons stated above, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its OZIUM mark at the time it registered the <oziumus.com> domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) Complainant claims that its OZIUM trademarks have “acquired significant goodwill and public recognition” because it has “promoted them at considerable expense worldwide”. Complainant’s evidence consists of screenshots of its <ozium.com> website and those of some of its retail partners such as Amazon.com. While this evidence doesn’t directly speak to Complainant’s claimed “considerable expense” or the reputation that the mark may have with consumers or Complainant’s industry, the Panel is prepared to accept that the mark has gained some goodwill based on its sale through substantial and recognized retail channels. More convincing, however, is the use to which Respondent has placed the <oziumus.com> domain name to impersonate Complainant and either operate a scam or sell what may be inauthentic goods. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”)
Next, Complainant argues that Respondent has acted in bad faith by violating Policy ¶ 2 which, it asserts, states Respondent’s obligation “to ensure the Domain Name would not infringe the rights of another upon registration.” The Panel finds Complainant’s reliance on Policy ¶ 2 inapplicable as “that line of reasoning has now been fundamentally disavowed.” Hike Private Limited v. Perfect Privacy LLC / Zcapital, D2017-0902 (WIPO Aug. 25, 2017) citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at 3.2.1. In essence, Policy ¶ 2 is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon. As such, the Panel will not consider this line of argument.
However, Complainant further argues that Respondent registered and uses the <oziumus.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where the respondent uses a disputed domain name to pass itself off as a complainant, Panels have found evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). See also The American Kennel Club, Inc. v. Linh Hoang, D2021-3719 (WIPO Jan. 19, 2022) (“Having drawn Internet users to its website by using a confusingly similar approximation of Complainant’s mark and mimicking its logo, Respondent is fraudulently soliciting payments from website visitors. Such conduct is emblematic of bad faith use of the disputed domain name.”) Under the circumstances of Respondent’s use of the <oziumus.com> domain name as described in the prior section, the Panel finds that Respondent has disrupted Complainant’s business and drawn users to its website for commercial gain based upon confusion with the OZIUM trademark. Thus, it has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oziumus.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 18, 2023
[i] The submitted registration certificates name other entities Ecolab Ltd of Ontario, Canada and Auto Expressions, LLC of Compton, California (USA). While the Complaint states that these registrations were “later acquired by Complainant through a series of transactions”, it does not provide any supporting evidence, such as screenshots of USPTO assignment records. However, the Panel has, under its own discretion, reviewed these records and found that both USPTO registrations are currently owned by Niteo Products, LLC.
[ii] As for the remainder of Complainant’s claimed trademark registrations, these are provided only in the form of a textual list mentioning such information as countries, marks, and registration numbers. Mere textual lists of trademark registrations do not constitute evidence of such registrations and so the Panel will not consider these here.
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