3d-liners.com, 3d-maxpider.com

The timeline behind 3d-liners.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Formosa Saint Jose Corp. v. Fernando Roberts Claim Number: FA1906001847366 PARTIES Complainant is Formosa Saint Jose Corp (“Complainant”), represented by Amanda Osorio, of Revision Legal, Michigan, USA. Respondent is Fernando Roberts (“Respondent”), New York, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <3d-liners.com> and <3d-maxpider.com>, registered with GoDaddy.com, LLC. 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. The Honourable Neil Anthony Brown QC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on June 11, 2019; the Forum received payment on June 11, 2019. On June 12, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <3d-liners.com> and <3d-maxpider.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2019 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@3d-liners.com, postmaster@3d-maxpider.com. Also on June 13, 2019, 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 July 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. PARTIES' CONTENTIONS A. Complainant Complainant made the following contentions. Complainant has offered leading and high-quality vehicle floor mats, carpeting and other similar goods throughout the world. Complainant has rights in the 3D (e.g. Reg. No. 5,594,325, registered Oct. 30, 2018) and 3D MAXPIDER (e.g. Reg. No. 5,693,279, registered Mar. 5, 2019, filed Feb. 2, 2018) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Exs. F & G. Respondent’s <3d-liners.com> and <3d-maxpider.com> domain names are identical or confusingly similar to one of Complainant’s marks as one merely adds a hyphen and the “.com” generic top-level domain (“gTLD”), while the other adds a hyphen, the generic term “liners,” and the “.com” gTLD. Respondent has no rights or legitimate interests in the <3d-liners.com> and <3d-maxpider.com> domain names. Respondent is not commonly known by the disputed domain names according to the WHOIS information, nor has Complainant licensed, assigned, or authorized Respondent to use its marks. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses one of the domain names to resolve to a webpage that purports to sell Complainant’s products and infringes on Complainant’s trademark rights. See Compl. Ex. Q. Respondent registered and uses the <3d-liners.com> and <3d-maxpider.com> domain names in bad faith. Respondent uses the domain names to cause consumer confusion while offering competing goods and services, thereby disrupting Complainant’s business. See Compl. Ex. Q. Additionally, Respondent must have had actual and/or constructive knowledge of Complainant’s rights in the 3D and 3D MAXPIDER marks when it registered the infringing domain names. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 1. Complainant is a United States company engaged in the provision of high-quality vehicle floor mats, carpeting and other similar goods throughout the world. 2. Complainant has established its trademark rights in the 3D (e.g. Reg. No. 5,594,325, registered Oct. 30, 2018) and 3D MAXPIDER (e.g. Reg. No. 5,693,279, registered Mar. 5, 2019, filed Feb. 2, 2018) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). 3. Respondent registered the <3d-liners.com> and <3d-maxpider.com> domain names on March 20, 2019 and June 19, 2018, respectively. 4. Respondent has caused the disputed domain names to be linked to an ecommerce website infringing Complainant’s trademarks and directly competing with Complainant by purporting to sell the same products. 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 The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the 3D (e.g. Reg. No. 5,594,325, registered Oct. 30, 2018) and 3D MAXPIDER (e.g. Reg. No. 5,693,279, registered Mar. 5, 2019, filed Feb. 2, 2018) marks through its registration of the marks with the USPTO. See Compl. Exs. F & G. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i) and can date back to the filing date of the trademark application. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”); see also Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). Accordingly, the Panel finds that Complainant has established rights in the 3D and 3D MAXPIDER marks for the purposes of Policy ¶ 4(a)(i). The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 3D and 3D MAXPIDER marks. Complainant argues that Respondent’s <3d-liners.com> and <3d-maxpider.com> domain names are identical or confusingly similar to one of Complainant’s marks as one merely adds a hyphen and the “.com” gTLD, while the other adds a hyphen, the generic term “liners,” and the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See 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.”); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds that the <3d-liners.com> and <3d-maxpider.com> domain names are confusingly similar to the 3D and/or 3D MAXPIDER mark under Policy ¶ 4(a)(i). Complainant has thus made out the first of the three elements that it must establish. Rights or Legitimate Interests It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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”). The Panel finds that Complainant has made out a prima facie case that arises from the following considerations: (a) Respondent has chosen to take Complainant’s 3D and/or 3D MAXPIDER trademarks and to use them in its domain names, in one of them merely adding a hyphen and the “.com” gTLD, while in the other adding a hyphen, the generic term “liners,” and the “.com” gTLD; (b) Respondent registered the <3d-liners.com> and <3d-maxpider.com> domain names on March 20, 2019 and June 19, 2018, respectively ; (c) Respondent has caused the disputed domain names to be linked to an ecommerce website infringing Complainant’s trademarks and directly competing with Complainant by purporting to sell the same products; (d) Respondent has engaged in these activities without the consent or approval of Complainant; (e) Complainant contends that Respondent has no rights or legitimate interests in the <3d-liners.com> and <3d-maxpider.com> domain names as Respondent is not commonly known by the disputed domain names per the WHOIS information, nor has Complainant licensed, assigned, or authorized Respondent to use its marks. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Fernando Roberts” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. See Compl. Exs. P & S. Accordingly, the Panel agrees that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii); (f) Complainant argues that Respondent uses the <3d-maxpider.com> domain name to resolve to a webpage that purports to sell Complainant’s products and infringes on Complainant trademark rights. Using a confusingly similar domain name to compete with a complainant or offer a complainant’s products can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). Complainant provides a screenshot of the resolving webpage associated with the <3d-maxpider.com> domain name, which displays the 3D MAXPIDER mark and appears to solicit the sale of mat and liner products. See Compl. Ex. Q. As such, the Panel may hold that Respondent’s competing use of the <3d-maxpider.com> domain name provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii); (g) Having regard to the totality of the evidence and inferences that can be drawn therefrom, the Panel finds that Respondent has no right or legitimate interest in either of the two disputed domain names. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has thus made out the second of the three elements that it must establish. Registration and Use in Bad Faith It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons. First, Complainant submits that Respondent uses the domain names to cause consumer confusion while offering competing goods and services, thereby disrupting Complainant’s business. Using a confusingly similar domain name in a manner disruptive of a complainant’s business by trading upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). The Panel notes that Complainant provides a screenshot of the resolving webpage associated with the <3d-maxpider.com> domain name, which displays the 3D MAXPIDER mark and appears to solicit the sale of mat and liner products. See Compl. Ex. Q. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv). Secondly, Complainant argues that Respondent must have had actual and/or constructive knowledge of Complainant’s rights in the 3D and 3D MAXPIDER marks when it registered the infringing domain names. Generally, prior UDRP decisions decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends the following to support its argument: 1) the timing of Respondent’s registration date of the disputed domain names; 2) Respondent’s competitive and infringing use of the domain names; 3) the identical nature of the domain names and Complainant’s trademarks; 4) Complainant’s use of <3dmaxpider.com> and Respondent’s use of the same with the mere addition of a hyphen and the word liner; 5) Complainant’s trademark rights (dating back to at least 2010), and; 6) Complainant’s fame and success. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii). Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the 3D and 3D MAXPIDER marks and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression. Complainant has thus made out the third of the three elements that it must establish. 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 <3d-liners.com> and <3d-maxpider.com> domain names be TRANSFERRED from Respondent to Complainant. The Honourable Neil Anthony Brown QC Panelist Dated: July 9, 2019 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.