Wednesday , August 10 2022

Head.com: Corp using UDRP to fight faux fashionista domainer

If you got some “head” domains, better watch out: the HEAD brand is strong and famous.

The HEAD Group operates from the domain Head.com and its international roster of companies is impressive. HEAD creates sportswear and other fashion items with its world-renowned logo.

It comes as no surprise when China-based producers of faux (fake) fashion merchandise are using domain name similar to the HEAD Group’s. In a recent case that took the UDRP route, the domains involved are sports-head.com, headfr.com, shop-head.com, and headsoldes.com (HEAD Sales in French.)

The Respondent utilized a form of deceptive merchandise portal, mimicking that on Head.com but also potentially used these faux HEAD portals to steal credit card and other personal information.

Meanwhile, the Complainant has rights in the HEAD mark based on registration with the United States Patent and Trademark Office, such as Reg. No. 675,190, registered Mar. 10, 1959.

The UDRP process is a good option to halt the online activities of fake product sellers and in this case the sole Forum (NAF) panelist agreed, ordering the transfer of these domains.

Head Technology GmbH v. Hyudn Ijdhfdf / Ygdshf Pjfdue / xia chuan / Ghdyyn Pjdsdj

Claim Number: FA2204001994522

PARTIES

Complainant is Head Technology GmbH (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Hyudn Ijdhfdf / Ygdshf Pjfdue / xia chuan / Ghdyyn Pjdsdj (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are sports-head.com, headfr.com, shop-head.com, and headsoldes.com (collectively “Domain Names”), 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.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 29, 2022; the Forum received payment on April 29, 2022.

On May 6, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the sports-head.com, headfr.com, shop-head.com, and headsoldes.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 May 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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 [email protected], [email protected], [email protected], [email protected] Also on May 10, 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 7, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.

RELIEF SOUGHT

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 contends that the registrants for the Domain Names are related because the Domain Names are all variants of Complainant’s HEAD mark, were registered with the same privacy service and registrar, use the same nameservers, and the Domain Names redirect what are very similar websites (the “Respondent’s Websites”). In essence each of the Domain Names leads to a website offering unauthorized versions of Complainant’s products for sale, using similar layouts, sharing numerous common elements and using some of the same photographs copied from the Complainant’s official website. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named registrants unrelated, it would be unlikely that four unconnected entities would register four similar domain names within the same three-month period and point them to very similar websites.

In light of these contentions, which none of the identified registrants deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Head Technology GmbH, operates a sporting goods company with a rich history in tennis, ski, and other sports products. Complainant has rights in the HEAD mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 675,190, registered Mar. 10, 1959). Respondent’s sports-head.com, headfr.com, shop-head.com, and headsoldes.com domain names are identical or confusingly similar to Complainant’s HEAD mark, each incorporating the HEAD mark in its entirety, only adding a generic or geographic term, in some cases a hyphen, and appending the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights and legitimate interests in the sports-head.com, headfr.com, shop-head.com, and headsoldes.com domain names as Respondent is not commonly known by any of the Domain Names and is neither an authorized user or licensee of Complainant’s HEAD mark. Additionally, Respondent does not use any of the Domain Names for either a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead uses each of the Domain Names to pass off as Complainant (by displaying the HEAD Mark and logo and reproducing images and other content from Complainant’s website).

Respondent registered and uses each of the sports-head.com, headfr.com, shop-head.com, and headsoldes.com domain names in bad faith. Respondent uses each of the Domain Names to disrupt Complainant’s business and to attract visitors for commercial gain by creating a likelihood of confusion with Complainant. Given the content of the Respondent’s Websites, Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the HEAD mark.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds trademark rights for the HEAD mark. Each of the Domain Names is confusingly similar to Complainant’s HEAD mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.

DISCUSSION

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”).

Identical and/or Confusingly Similar

Complainant has rights in the HEAD mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 675,190, registered Mar. 10, 1959). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).

The Panel finds that each of the Domain Names are confusingly similar to the HEAD mark as they each incorporate the entire HEAD mark while adding generic or geographic terms (“soldes” being a French word for “sales” and “fr” being a commonly used abbreviation for “France”), in some cases a hyphen and the “.com” gTLD. Adding a generic term, a hyphen and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name skechers-outlet.com adds a hyphen and the generic term ‘outlet’ to Complainant’s registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the HEAD mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the statefarmforum.com domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Hyudn Ijdhfdf / Ygdshf Pjfdue / xia chuan / Ghdyyn Pjdsdj” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

The Domain Names resolve to the Respondent’s Websites which, through the reproduction of the HEAD Mark, Complainant’s logo and copyrighted material from Complainant’s website at www.head.com, pass themselves off as official websites of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant’s registered mark, and are being used for websites that prominently display Complainant’s mark and logo, along with apparent images of Complainant’s products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (October-December 2021), Respondent had actual knowledge of Complainant’s HEAD mark since the Respondent’s Websites pass themselves off as official websites of the Complainant and as such reproduce material from Complainant and make repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register four domain names that contain the HEAD mark and use them to redirect visitors to websites selling goods in direct competition with the Complainant under the HEAD mark other than to take advantage of Complainant’s reputation in the HEAD mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s HEAD mark for commercial gain by the confusingly similar Domain Names to resolve to websites that, through the use of the HEAD mark and Complainant’s copyrighted material, mimic Complainant’s website and offers unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See 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).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the lbittrex.com domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).

The Panel finds Complainant has satisfied 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 sports-head.com, headfr.com, shop-head.com, and headsoldes.com domain names be TRANSFERRED from Respondent to Complainant.

Nicholas J.T. Smith, Panelist

Dated: June 7, 2022

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