Complainant is Razor USA LLC, United States of America, internally represented.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Lucky017 Lucky017, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2021, 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 Complainant on October 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.
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 Respondent of the Complaint, and the proceedings commenced on October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2021.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 12, 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 BackgroundComplainant develops, markets, and sells a variety of goods and services using the RAZOR marks, such as scooters, land vehicles, ride-on toys, bicycles, sporting equipment, mobility devices, motorcycles, hover boards, go-carts, clothing, accessories, video game software and hardware, and telecommunications and other related goods and services.
Complainant has a number of RAZOR trademark registrations around the world, with dates of first use dating back to at least August 1, 1998, including United States of America Reg. No. 2,716,150, registered on May 13, 2003.
Complainant also is the registrant of
The disputed domain name was registered on August 17, 2021. As of September 24, 2021, the disputed domain name led to a website that purported to offer electric scooters for sale at a discount.
5. Parties’ Contentions A. ComplainantComplainant asserts that the disputed domain name is identical or confusingly similar to Complainant’s RAZOR trademark in that the domain name incorporates “razor” and appends to it “outlet.shop”, plainly suggesting that the site is Complainant’s “outlet” and that it sells genuine Razor products in its online “outlet.shop”.”
Complainant also notes that the home page at the disputed domain name is entitled “Razor”, it purports to offer only Razor products for sale, and the site relies on Razor’s copyright-protected product images to advertise the products. Complainant also alleges that, “[o]n information and belief, based on customer complaints, the site does not actually sell any products; it collects money for payment but does not deliver the paid-for items.”
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because (a) Complainant’s use of the RAZOR trademark began at least as early as 1999 and Respondent allegedly did not use the disputed domain name until at least August 17, 2021, (b) Respondent’s use of the disputed domain name allegedly “is illegal, fraudulent, and in violation of, inter alia, Razor’s legitimate intellectual property rights”, (c) Respondent has no trademark registrations or other rights in the RAZOR marks, (d) Respondent is not making any bona fide offering of goods or services, but rather purports to offer genuine Razor products and accepts payment but does not deliver the goods that were ordered, and (e) Respondent is not authorized to distribute or resell Razor products.
Complainant also asserts that Respondent has registered and is using the disputed domain name in bad faith, in that “Respondent intentionally uses the disputed domain name to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s RAZOR Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and products purportedly offered for sale on the Respondent’s website” and “Respondent has misused the disputed domain name to mislead consumers into ordering goods that are being offered as genuine Razor’s goods but are not and/or consumers receive no goods in return for payment.”
Complainant further notes that it has not authorized, licensed, or permitted any person or entity to use the RAZOR marks, that the goods purportedly being offered via the disputed domain name do not appear to be genuine, and that there is no evidence Respondent has been or was commonly known by the disputed domain name. Finally, Complainant notes that Respondent’s use of a proxy service to register the disputed domain name weighs in favor of a finding of bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly SimilarUnder paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.
Complainant’s trademark registrations listed in the Annexes to the Complaint demonstrate that Complainant has rights in the RAZOR mark.
The disputed domain name consists of the RAZOR mark, followed by a hyphen, followed by the word “outlet”, with the “.shop” generic Top-Level Domain (“gTLD”) at the end. Generally, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” WIPO Overview 3.0, section 1.8. Thus, the use of “-outlet” in the disputed domain name would not prevent a finding of confusing similarity.
The addition of the “.shop” gTLD also does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsComplainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.
“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 [Respondent’s] rights or legitimate interests to the [disputed] domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the [disputed] domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Rather, Complainant asserts that Respondent’s use of the disputed domain name is infringing and fraudulent, and thus not bona fide, that Respondent’s use of the disputed domain name began more than 20 years after Complainant’s use and is not authorized, and that Respondent’s use of the disputed domain name is for commercial and fraudulent purposes.
Complainant claims that “Respondent intentionally uses the disputed domain name to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s RAZOR Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and products purportedly offered for sale on the Respondent’s website” and “Respondent has misused the disputed domain name to mislead consumers into ordering goods that are being offered as genuine Razor’s goods but are not and/or consumers receive no goods in return for payment.”
These allegations make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. See, e.g., WIPO Overview 3.0, section 2.13 (“Panels 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.”). In general, it will be very difficult for a respondent, who has no relevant trademark rights and is not authorized by the complainant to use the complainant’s mark, to establish rights or legitimate interests if the respondent purports to be selling the complainant’s goods or services via an identical or confusingly similar domain name. Shaw Industries Group, Inc. and Columbia Insurance Company v. Texas Best Flooring Company Inc.,WIPO Case No. D2011-1676 (“if a Complainant owns a trademark for SHAW in connection with carpets, it generally would be very difficult for another entity to use a confusingly similar mark for carpets without permission”).
Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithComplainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he 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 [Respondent has] registered or [Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or
(ii) [Respondent has] registered the [disputed] domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.
Complainant asserts that “Respondent intentionally uses the disputed domain name to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s RAZOR Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and products purportedly offered for sale on the Respondent’s website” and “Respondent has misused the disputed domain name to mislead consumers into ordering goods that are being offered as genuine Razor’s goods but are not and/or consumers receive no goods in return for payment.” Indeed, the use of “-outlet” contributes to confusion, as it “implies an authorized online sales outlet for Complainant’s equipment and parts”. Grundfos Holding A/S v. Sergey M Doubovitskiy,WIPO Case No. D2011-0346.
These unrebutted allegations satisfy paragraph 4(b)(iv) of the Policy. See Dansko, LLC v. Congj Buxar,WIPO Case No. D2018-1672 (“Complainant’s allegations that Respondent created a website that falsely appears to be a website for or associated with Complainant, where Respondent fails to deliver promised merchandise, appears to be consistent with paragraph 4(b)(iv) of the Policy. Indeed, numerous previous UDRP panels have found bad faith under such circumstances.”); Diesel S.p.A. v. WhoIsGuard, Inc. / Myra Kern,WIPO Case No. D2018-2402 (“The case file also shows that the disputed domain name has been linked to a website selling goods bearing the ‘DIESEL’ trademark for a discounted price this being an indication that these goods might be counterfeited. Furthermore, the Complainant made a test purchase on the said website, the payment was processed but the good was never received. Such scheme has obviously to be considered as a bad faith use of the disputed domain name … .”). Further, the fact that the disputed domain name is confusingly similar to Complainant’s RAZOR mark, combined with the fact that Respondent’s website purports to offer Complainant’s products for sale (without authorization), demonstrate that Respondent was aware of Complainant’s mark at the time Respondent registered the disputed domain name. Given that “[t]he uncontroverted evidence establishes that Respondent knew or should have known of Complainant’s mark prior to the … registration of the Disputed Domain Name … the Panel finds that Respondent registered the Disputed Domain Name in bad faith.” eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693.
Accordingly, the Panel finds that the record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
7. DecisionFor 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,
Bradley A. Slutsky
Sole Panelist
Date: November 26, 2021