The Complainant is ChannelAdvisor Corporation, United States of America (the “United States”), represented by Hutchison PLLC, United States.
The Respondent is Domain Administrator, PrivacyGuardian.org / beicai, cai bei, China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 16, 2021 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 August 16, 2021.
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 September 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 13, 2021. 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 BackgroundThe Complainant is a United States company, founded in 2001, that provides cloud-based e-commerce software. The Complainant’s software platform enables users to manage their e-commerce platforms and enable fulfilment of orders made on a number of the world’s leading online sales website.
The Complainant is the owner of multiple trade mark registrations for the words “ChannelAdvisor” (the “CHANNELADVISOR Mark”), including a United States trade mark registered on July 30, 2002 (registration number 2,602,395) for “online auction posting and management services” in class 35. Since 2011, the Complainant has also used a distinctive arrow logo (the “Logo Mark”) to promote its goods and services. The Logo Mark was registered as a trade mark in the United States on December 15, 2015 (registration number 4,869,680).
Each of the Domain Names were registered on July 7, 2021. The Domain Names are presently inactive however the Complaint provides evidence that, prior to the commencement of the proceeding, each of the Domain Names resolved to a website (“Respondent’s Website) containing a link and a QR code depicting the Complainant’s Logo Mark. When an Internet visitor interacted with the website, the website will download and install unwanted software on the user’s system and the user is invited to create an account and submit personal information to the Respondent. The Complainant has received complaints from third parties who have been misled into providing their personal information by way of the Respondent’s Website.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s CHANNELADVISOR Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the CHANNELADVISOR Mark, having registered the CHANNELADVISOR Mark in the United States and other jurisdictions. The Domain Names each reproduce the CHANNELADVISOR Mark along with additional words “mall”, “shopping” or “store”) which do not distinguish the Domain Names from the CHANNELADVISOR Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as the Domain Names nor does the Respondent have any authorization from the Complainant to register the Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Rather the Respondent is using the Domain Names to operate a fraudulent phishing scheme to impersonate the Complainant, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. The Domain Names are being used for a website that impersonates the Complainant for the purpose of misleading individuals into providing their personal information to the Respondent. Such conduct amounts to registration and use of the Domain Names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the CHANNELADVISOR Mark, having registrations for the CHANNELADVISOR Mark as a trade mark in the United States as well as in the other jurisdictions including the European Union, China, and Japan.
Each of the Domain Names incorporates the CHANNELADVISOR Mark with the addition of the terms “mall”, “shopping” and “store“ (and the “.com” generic Top-Level Domain (“gTLD”), which can be discounted as an essential element of any domain name). Other UDRP panels have repeatedly held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884; and Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s CHANNELADVISOR Mark.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the CHANNELADVISOR Mark or a mark similar to the CHANNELADVISOR Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Names as to operate a website passing itself off as a website connected to the Complainant for the purposes of obtaining personal information from the Complainant’s consumers or employees. Such conduct is fraudulent and is not a bona fide offering of goods or services. As stated in section 2.3.1 of the WIPO Overview 3.0 “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the CHANNELADVISOR Mark at the time the Domain Names were registered. The Respondent’s Website prominently displays the Complainant’s Logo Mark. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Names were registered other than by reference to the Complainant. The registration of the Domain Names in awareness of the Complainant and its rights in the CHANNELADVISOR Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Names to operate a website that, through the display of the Logo Mark, misleads visitors as to the identity of the owner of the website for its own commercial gain (by illicitly obtaining personal information from visitors). Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner,WIPO Case No. D2012-1804. The Panel finds that the Respondent is using the Domain Names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names,
Nicholas Smith
Sole Panelist
Date: October 20, 2021