WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Otter Products, LLC v. Registration Private, Domains By Proxy, LLC / San Mao
Case No. D2017-1192
1. The Parties
The Complainant is Otter Products, LLC of Fort Collins, Colorado, United States of America ("United States"), internally-represented.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / San Mao of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <otterboxcover.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 20, 2017. On June 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 20, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 22, 2017. The Respondent sent an informal email communication to the Center on June 22, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on July 17, 2017.
The Center appointed John Swinson as the sole panelist in this matter on July 21, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Otter Products, LLC. Founded in 1998, the Complainant designs and manufactures protective products such as waterproof boxes and device-specific cases for smartphones and tablet devices. The Complainant's headquarters is located in Fort Collins, Colorado, United States and the Complainant also has offices in San Diego, United States; Hong Kong, China and Cork, Ireland.
The Complainant owns United States registered trade mark numbers 3788534 and 4451386 for OTTERBOX (the "Trade Mark") which were registered on May 11, 2010 and December 17, 2013 respectively. According to the Complainant, the Complainant also owns registered OTTERBOX trade marks in at least 50 other countries worldwide.
The Respondent is San Mao, an individual of China and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on June 16, 2017.
At the time of this decision, the Disputed Domain Name does not point to an active website.
5. Parties' Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant has been using the Trade Mark in relation to protective covers and cases for handheld electronic devices and online retail store services in the United States since 2010. The Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is interfering with the legitimate business dealings of the Complainant's authorised resellers which is not legitimate, noncommercial or fair use of the Disputed Domain Name. To this end, the Respondent has been misrepresenting itself as the Complainant and purporting to enforce the Complainant's intellectual property rights against those resellers.
There is no relationship between the Complainant and the Respondent and the Complainant has not licensed or otherwise authorised the Respondent to use the Trade Mark. Even if the Respondent were an authorised reseller of the Complainant, the Complainant does not permit its authorised resellers to use the Trade Mark in domain name registrations.
Registered and Used in Bad Faith
The Respondent used a privacy service to register the Disputed Domain Name in order to conceal its identity and ensure that it cannot be readily ascertained, which indicates bad faith.
The Respondent is misrepresenting him or herself to members of the public as an attorney for the Complainant. The Respondent used the Disputed Domain Name to report to the website at the domain name <amazon.com> ("Amazon") that certain sellers are offering counterfeit products of the Complainant. Amazon has then "flagged" these product listings, which are then redirected to a product listing owned by the Respondent. The Respondent's misrepresentations are fraudulent and are causing financial harm to the flagged sellers, who are presumably competitors of the Respondent.
The use and existence of the Disputed Domain Name causes the Complainant reputational harm.
The Respondent did not reply to the Complainant's submissions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
A. Procedural Issues
The Respondent sent an informal email communication to the Center on June 22, 2017 in response to the Center's Notice of Change in Registrant Information. This email communication contained no submissions in response to the Complaint, but asked about the identity of the sender (i.e., the Center). This is not a Response under the Policy.
The Respondent's failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel is satisfied that the Complainant has rights in OTTERBOX by virtue of its ownership and use of the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and is combined with the descriptive term "cover".
In this case, the generic Top-Level Domain ("gTLD") ".com" is irrelevant in assessing confusing similarity under the Policy and may be ignored. Accordingly, the relevant comparison is between OTTERBOX and "otterboxcover".
It is well established that the addition of a descriptive term, such as "cover", does not prevent a finding of confusing similarity. In these circumstances, this addition does not distinguish the Disputed Domain Name from the Trade Mark (see, e.g., Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110).
The Panel considers that the addition of the term "cover" may reinforce confusing similarity, as the term "cover" can be easily associated with the products which the Complainant provides, being protective cases or covers for handheld and tablet devices. In the circumstances, the Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark.
In light of the above, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time of this decision, there was no active website associated with the Disputed Domain Name. Further, the Complainant has submitted that the Respondent is using the Disputed Domain Name in a fraudulent manner by misrepresenting him or herself as the Complainant's attorney and contacting Amazon to report sellers for offering counterfeit goods of the Complainant (as further detailed below). In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
- The Panel accepts the Complainant's submission that the Complainant has not licensed or otherwise authorised the Respondent to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Currently, there is no content at the Disputed Domain Name, or other evidence before the Panel, which would suggest such use. Also, again, the Complainant submits that the Respondent was making a fraudulent use of the Disputed Domain Name. If this is the case, the Respondent presumably did so for commercial gain.
As stated above, the Complainant submits that the Respondent has been using the Disputed Domain Name to hold itself out as being the attorney of the Complainant in communications with Amazon. The Respondent has apparently been reporting to Amazon that sellers listed on Amazon are offering counterfeit "Otterbox" products. The listings of these sellers are then flagged by Amazon and, according to the Complaint, are subsequently redirected to the Respondent's own product listings.
The Complainant has provided no evidence to support these submissions beyond its sworn Complaint. However, the Respondent had the opportunity to demonstrate his or her rights or legitimate interests, but did not do so. On this basis, and in the absence of a Response from the Respondent, the Panel accepts the Complainant's submissions and considers that the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant has been operating for almost 20 years and has become an industry-leading brand for protective products for electronic devices and related accessories. The Complainant has provided evidence of its registered rights in the Trade Mark from 2010.
The Disputed Domain Name was registered on June 16, 2017.
In light of the reputation of the Complainant and the Trade Mark, as well as the connection between the additional term "cover" and the products manufactured and sold by the Complainant, it is clear that the Respondent had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. As such, Internet users are likely to assume that the website associated with the Disputed Domain Name is affiliated with the Complainant or offers genuine products manufactured by the Complainant. Here, the Panel can reasonably infer that the Respondent sought to take advantage of the reputation of the Complainant's business and the Trade Mark, and registered the Disputed Domain Name because of this reputation. This is bad faith registration.
As stated above in relation to the second element of the Policy, the Complainant submits that the Respondent is misrepresenting him or herself as being an attorney for the Complainant for the purpose of reporting supposed counterfeit listings to Amazon. The Complainant also submits that the listings of the reported sellers are "flagged" as a result of the Respondent's reports, taken down and then redirected to a listing owned by the Respondent. Notwithstanding the absence of evidence from the Complainant in support of these submissions, the Panel considers that the Respondent registered and is using the Disputed Domain Name in order to disrupt the business activities of a competitor, being the Complainant and/or its authorized resellers, which is evidence of registration in bad faith (see paragraph 4(b)(ii) of the Policy).
In these circumstances, the registration of the Disputed Domain Name using a privacy service and failure to file a Response also supports a finding of bad faith (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <otterboxcover.com> be transferred to the Complainant.
Date: August 3, 2017