WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Future Motion, Inc. v. Contact Privacy Inc., Customer 0153887810 / Wu Xiaojie, Giftminds

Case No. D2019-0853

1. The Parties

The Complainant is Future Motion, Inc., United States of America (“United States”), represented by Kolitch Romano LLP, United States.

The Respondent is Contact Privacy Inc., Customer 0153887810, Canada / Wu Xiaojie, Giftminds, Australia.

2. The Domain Name and Registrar

The disputed domain name <flashonewheel.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2019. On April 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2019, 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 April 23, 2019, 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 amendment to the Complaint on April 25, 2019.

The Center verified that the Complaint together with the amendment to the 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 April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on June 5, 2019. 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 a United States corporation, incorporated under the laws of the state of Delaware, with its principal place of business in Santa Cruz, California, United States. The Complainant has, since early 2014, operated a business of selling electric sports boards, including a line of electric skateboards under the trademark ONEWHEEL. The Complainant is the registrant of the domain name <onewheel.com>, from which it operates an online web store selling its electric skateboards.

For use in connection with its business operations, the Complainant is the owner of, inter alia, the following trademarks:

- United States Trademark Registration No. 4622766, ONEWHEEL, registered on October 14, 2014;

- United States Trademark Registration No. 4715457, logo, registered on April 7, 2015; and

- International Trademark Registration No. 1227105, ONEWHEEL, registered on August 26, 2014, designating Australia, China, France, Germany, Israel, Japan, Switzerland and the United Kingdom.

The disputed domain name was registered on February 6, 2019. The disputed domain name previously resolved to a website that purported to be an online store for electric skateboards resembling the Complainant’s products and bearing the Complainant’s trademark (the “Respondent’s website”). At the time of this decision, the disputed domain name resolves to a Shopify landing page.

5. Parties’ Contentions

A. Complainant

The Complainant contends, in relevant part, as follows:

The Complainant asserts rights in the ONEWHEEL trademark by virtue of its registration and use in commerce since 2014, details of which are set out in the factual background section above. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s ONEWHEEL trademark, as it incorporates the Complainant’s trademark in its entirety. The Complainant argues that the mere addition of the term “flash” does nothing to distinguish the disputed domain name from the Complainant’s well-known ONEWHEEL mark, and therefore does nothing to prevent a likelihood of confusion.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant, nor has the Respondent received any license or permission to use the Complainant’s ONEWHEEL mark in any manner, including in domain names. The Complainant states that to the best of its knowledge, the Respondent is not commonly known by the disputed domain name. Rather, the Complainant asserts that the Respondent’s use of the disputed domain name has primarily been to disrupt and divert the business of the Complainant, and that it is not being used for any bona fide offering of goods or services. The Complainant argues that the Respondent has used the disputed domain name for commercial gain to misleadingly divert consumers. The Complainant provides evidence in the form of screen captures showing that the Respondent displayed a highly similar version of the Complainant’s stylized ONEWHEEL mark in a similar fashion to that in which it appears on the Complainant’s website. The Complainant submits that the Respondent has not used the disputed domain name to offer genuine ONEWHEEL-branded products, but rather has been offering lower-priced, inferior quality products under names that infringe on the Complainant’s trademark. In addition, the Complainant states that the Respondent’s website featured copyrighted images owned by the Complainant, without the Complainant’s prior authorization to do so. The Complainant further submits that the Respondent is not using the disputed domain name in connection with a legitimate noncommercial or fair use.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent knew or should have known of the Complainant’s rights in the ONEWHEEL trademark at the time it registered the disputed domain name, which is evidenced by the Respondent’s registration of a domain name that fully incorporates the Complainant’s trademark, and by the Respondent’s use of such a domain name to offer products that are similar to those of the Complainant or infringe on the Complainant’s trademark rights. The Complainant submits that by using the disputed domain name to offer such products, the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ONEWHEEL trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant further argues that the Respondent’s registration of the disputed domain name using a privacy service to shield its identity is further evidence of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to prevail, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established registered rights in the ONEWHEEL trademark, details of which are set out in the factual background section above.

The disputed domain name incorporates the Complainant’s ONEWHEEL trademark in its entirety, together with the term “flash” as a prefix, under the generic Top-Level Domain “.com”. As noted by prior UDRP panels, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms […] would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel considers the Complainant’s ONEWHEEL trademark to be readily recognizable in the disputed domain name. The addition of the term “flash” does not prevent confusing similarity between the disputed domain name and the Complainant’s trademark.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has provided evidence that the Respondent has used the disputed domain name to offer for sale products that are highly similar to those offered by the Complainant, bearing the Complaint’s ONEWHEEL trademark, at substantially lower prices than the prices charged by the Complainant. The Complainant asserts that the products offered on the Respondent’s website are in fact not manufactured or offered by the Complainant. The Complainant has also provided evidence indicating that the Respondent’s website displayed images from the Complainant’s website, without authorization from the Complainant to do so. The Panel finds that the Respondent has used the disputed domain name to offer goods bearing the Complainant’s trademark, which are not manufactured or sold by the Complainant, in an attempt to pass itself off as being the Complainant, or being affiliated with the Complainant. As noted by prior UDRP panels, “the use of a domain name for illegal activity (e.g., the sale of counterfeit goods […]) can never confer rights or legitimate interests on a respondent.” See WIPO Overview 3.0, section 2.13. The Respondent has not come forward to rebut any of the Complainant’s assertions in this regard. The fact that the disputed domain name now resolves to a Shopify landing page does not give rise to any rights or legitimate interests in the disputed domain name or alter the Panel’s findings under this element.

For the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

At the time of registration of the disputed domain name, the Complainant had been the owner of the ONEWHEEL trademark for several years, having marketed and sold its products internationally since 2014. The Respondent’s knowledge of the Complainant’s trademark and intent to target the Complainant are clear from the use to which the Respondent has put the disputed domain name, namely, to offer for sale products bearing the Complainant’s trademark, which are in fact not produced or sold by the Complainant, and by making use of images copied from the Complainant’s website, in an attempt to pass itself of as being or being affiliated with the Complainant. The Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, endorsement or affiliation of the Respondent’s website and the goods offered therein, amounting to bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In the circumstances, the Panel finds that the Respondent’s registration of the disputed domain name using a privacy service to hide its identity further indicates the Respondent’s bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <flashonewheel.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: June 17, 2019