Complainant is Future Motion, Inc., United States of America (“United States”), represented by Kolitch Romano LLP, United States.
Respondent is Ali Aldifahi, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2021. On January 26, 2021, the Center received an email communication from Respondent. The Center notified the commencement of Panel appointment process on February 17, 2021. The Center appointed John C. McElwaine as the sole panelist in this matter on February 23, 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 Background Complainant manufactures and sells a line of electric skateboards under the trademark ONEWHEEL. Complainant owns the following trademark registrations, relevant to this proceeding: - United States Trademark Registration No. 4622766 for the mark ONEWHEEL registered on October 14, 2014 in connection with “Vehicles, namely, electronically motorized skateboards” in International Class 12. On January 16, 2021, Respondent registered the Domain Name with the Registrar. The Domain Name resolved to a website offering for sale electric skateboards. 5. Parties’ Contentions A. Complainant As factual background concerning its trademark rights, Complainant contends that is the manufacturer of a well-known line of electric skateboards sold under the ONEWHEEL trademark from retail shops, at trade shows, and through its online retail store located at “www.onewheel.com”. Complainant alleges that it has been using its ONEWHEEL trademark for its electric skateboards since at least as early as January 2014. Complainant alleges that it offers and sells its products internationally, including in Australia, Canada, Central and South America, and Europe, among other locations. Complainant contends that it has invested substantial amounts of time and resources in building, promoting, maintaining, and protecting its rights in its ONEWHEEL trademark, including without limitation, by obtaining trademark registrations in the ONEWHEEL trademark in the United States and internationally. Collectively, these unregistered and registered trademark rights are referred to herein as the “ONEWHEEL Mark”. Complainant contends that due to its extensive use and promotion, and the resulting commercial success, Complainant has built up tremendous and valuable goodwill in the ONEWHEEL Mark and that given the amount of advertising, sales, and immediate public recognition in connection with Complainant’s ONEWHEEL product, the ONEWHEEL Mark is well-known and has become a distinctive identifier which consumers associate with Complainant. In support, Complainant alleges that its ONEWHEEL product was first popularized on “www.kickstarter.com” beginning as far back as January 2014. The Kickstarter campaign initiated by Complainant for its ONEWHEEL product achieved over 600% of its original funding goal, thus indicating its instant popularity. Further, Complainant alleges that its ONEWHEEL product has been the topic of numerous popular online magazines and blogs. For example, Complainant asserts that “www.wired.com” has published multiple articles featuring Complainant’s ONEWHEEL products since launching its product in January 2014. With respect to the first element of the Policy, Complainant alleges that the Domain Name incorporates Complainant’s ONEWHEEL Mark merely and merely adds the letter “s” creating a pluralized version. Thus, Complainant contends that the Domain Name is confusingly similar to the ONEWHEEL Mark. With respect to the second element of the Policy, Complainant contends that Respondent is not sponsored by or affiliated with Complainant nor has Respondent received any license, authorization, or permission from Complainant to use its ONEWHEEL Mark in any manner, including in domain names. Complainant further points out that, to the best of its knowledge, Respondent is not commonly known by the Domain Name or any name that incorporates the word “onewheel”. Instead, Complainant alleges that Respondent’s use of the Domain Name was primarily for the purpose of operating a website (the “Website”) that diverted Internet users seeking Complainant or its products. To this point, Complainant alleges that although the Domain Name currently does not resolve to an active website, the content displayed on the Website prior to January 20, 2021 establishes that the Website prominently displayed, without permission, Complainant’s ONEWHEEL Mark in combination with images of Complainant’s goods. Complainant further provided exhibits purporting to show that the Website prominently displaying the ONEWHEEL Mark throughout its contents, including at the top of each webpage. Complainant contends that Respondent is not offering genuine ONEWHEEL products of Complainant. Instead, Complainant asserts that Respondent offers lower priced, inferior quality similar and/or infringing products. Complainant points to an example where the Website was offering for sale a “Onewheel+ XR” product for USD 350. Complainant contends that this similar or infringing product is offered for sale at a significantly lower price (in fact, 5 times less) than the price charged by Complainant and its authorized distributors for the same ONEWHEEL product. Complainant asserts that such evidence that its goods are being offered for sale disproportionately below market value is relevant to showing illegal activity, such as counterfeiting. In addition, Complainant asserts that the Website displays copyrighted images, slogans and marketing content owned by Complainant, without the authorization of Complainant. In sum, Complainant contends that the Domain Name is not being used for a legitimate, noncommercial or fair purpose. Moving on to the third element of the Policy, Complainant alleges that the ONEWHEEL Mark was well-known prior to the registration of the Domain Name and that Respondent’s actions of developing an infringing website and selling counterfeit products establishes that the Domain Name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of at multiple trademark registrations for the ONEWHEEL Mark. The Panel finds that Complainant owns valid trademark rights in the ONEWHEEL Mark and said rights predate the registration of the Domain Name. The Domain Name is virtually identical to the ONEWHEEL Mark but for the addition of the letter “s” creating a plural or possessive version. The addition of the letter “s” does not distinguish the Domain Name from the ONEWHEEL Mark and is a common form of typosquatting. See ESH Strategies Branding, LLC v. Kumpol Sawaengkarn,WIPO Case No. D2011-0843 (the addition or subtraction of the letter “s” from a name is a common mistake Internet users make, and therefore, constitutes typo squatting). Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s ONEWHEEL Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. In this matter, Complainant contends Respondent developed a website at the Domain Name using Complainant’s trademarks, images and product descriptions to sell counterfeit products. Section 2.13.2 of the WIPO Overview 3.0 provides the following guidance concerning such allegations, even when the respondent is in default: “Evidence that the goods are offered disproportionately below market value, that the goods are only sold under license or through a prescription (especially with pharmaceutical products), that the images of the goods prima facie suggest (e.g., where the relevant logo is distorted) that they are not genuine, that the respondent has misappropriated copyrighted images from the complainant’s website, that the goods are extremely rare, that the goods have prompted consumer complaints, or that a respondent has improperly masked its identity to avoid being contactable, have each been found relevant [to proving a lack of legitimate interest based upon illegal activity].” As evidence of unlawful behavior, Complainant submitted evidence and arguments that the Website displayed at the Domain Name was offering Complainant’s ONEWHEEL+ XR at discount of USD1499 or an 80% discount. In addition, by comparing annex 4 and annex 25, Complainant provided evidence that Respondent copied product descriptions, slogan and images from Complainant’s website. Respondent has been properly notified of the Complaint by the Center; however, Respondent failed to submit any response concerning these serious accusations. Complainant contends that it did not authorize registration of the Domain Name or development of the Website. As such, Complainant has established a prima facie case that Respondent lacks legitimate rights or interests in the Domain Name. Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(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 Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions. As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name, as the WhoIs information lists Respondent as Ali Aldifahi. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy. Also, the Panel finds that Respondent’s use is not legitimate use of the Domain Name. Respondent was using the Domain Name to resolve to a website allegedly engaged in unlawfully selling infringing or counterfeit goods. WIPO Overview 3.0, section 2.13.1 (“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 addition, the use of the Domain Name to divert Internet traffic to an infringing or misleading webpage is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options). Lastly, Respondent’s use of the Domain Name is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is selling alleged counterfeit or competing products from an infringing online retail website. Such activity does not amount to noncommercial or fair use. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647. The fact that the Domain Name does not currently resolve to an active infringing website does not obviate the Panel’s finding of lack of legitimate rights or interest. Passive holding of a disputed domain name incorporating a third-party, well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises,WIPO Case No. D2000-0242. Such passive holding of the Domain Name, without more, does not create rights or legitimate interests. Accordingly, for the reasons detailed above, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent had the opportunity to put forth evidence of its rights or legitimate interests yet provided no substantive response as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response and combined with the factors as detailed above, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to the ONEWHEEL Mark. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed. In addition, it is well settled that the practice of typosquatting constitutes obvious evidence of the bad faith registration of a domain name. See, Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0043 (citing Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”)). Typosquatting can be defined as “inherently parasitic and of itself evidence of bad faith”. Insurance Company v. Dyk Dylina/Privacy--Protect.org,WIPO Case No. D2011-0304. The Domain Name here was intentionally registered as a common typographical version or to appear confusingly similar to the ONEWHEEL Mark. As discussed herein, Respondent registered the Domain Name and linked it to a website using Complainant’s ONEWHEEL Mark, copied Complainant’s slogan, images and product descriptions. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The fact that Respondent may have ceased its infringement and is passively holding the Domain Name does not remedy its bad faith use of the Domain Name. See WIPO Overview 3.0, Section 3.3; Take-Two Interactive Software, Inc. v. Fundacion Private Whois,WIPO Case No. D2013-0586 (Although the domain name is not currently in use, respondent’s past conduct indicates that it could do nothing legitimate with the domain name and a finding of current use in bad faith is justified); National Westminster Bank plc v. Steve Mart,WIPO Case No. D2012-1711 (“A finding of bad faith use arising from just passive holding may ordinarily require an interval of more than just a few months to elapse during which a respondent merely holds a domain name and does not use it to resolve to an operational website. Here, the passive holding period now amounts to approximately 2 months (from at least January 20, 2021 to the present). Nevertheless, the prior actions of a respondent in actually using the domain name in bad faith may taint the ensuing passive holding period and label that period as simply a continuation of the prior bad faith use. This is particularly so here where Respondent’s prior use of the disputed domain name is so egregious and injurious to Complainant and to its customers as to likely incur criminal liability – let alone where a good likelihood exists that should Respondent retain the disputed domain name then, at some point in the near future, he will either repeat his prior illicit use of the disputed domain”). As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the ONEWHEEL Mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under 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 Domain Name, John C McElwaine
- United States Trademark Registration No. 4715457 for the mark ONEWHEEL (stylized) in connection with “Vehicles, namely, electronically motorized skateboards” in International Class 12.
- United States Trademark Registration No. 5601072 for the mark ONEWHEEL+XR in connection with “Self-propelled electric vehicle; Vehicles, namely, electronically motorized skateboards” in International Class 12.
- United States Trademark Registration No. 5953007 for the mark ONEWHEEL in connection with “Vehicles, namely, electronically motorized skateboards” in International Class 12.
- International Registration No. 1227105 for the mark ONEWHEEL in connection with “Vehicles, namely, electronically motorized skateboards” in International Class 12, with grants of protection issued in several countries, including in Japan, France, and Switzerland.
- International Registration No.1260437 for the mark ONEWHEEL (Stylized) in connection with “Vehicles, namely, electronically motorized skateboards” in International Class 12, with grants of protection issued in several countries including France, Israel, Switzerland, New Zealand, and the United Kingdom.
- International Registration No. 1434077 for the mark ONEWHEEL+XR in connection with “Self-propelled electric vehicle; vehicles, namely electronically motorized skateboards” in International Class 12, with grants of protection issued in several countries including Australia, China, the European Union, Japan, and Singapore.
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Sole Panelist
Date: March 8, 2021
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