WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newegg Inc. v. Mi Da

Case No. D2020-0447

1. The Parties

The Complainant is Newegg Inc., United States of America (“United States”), internally represented.

The Respondent is Mi Da, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <neweggstats.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2020.

The Center appointed Douglas Clark as the sole panelist in this matter on April 7, 2020. 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 an online retailer that offers products and services for sale in 80 countries through the mobile applications and websites that it owns and operates, including the “www.newegg.com” website.

The Complainant is the owner of various NEWEGG trademarks in the world, including Hong Kong, China trademark No. 301860318 registered on November 30, 2011 in classes 35 and 38; United States trademark No. 3383264 registered on February 12, 2008 in class 35; United States trademark No. 4024526 registered on September 13, 2011 in class 35; United States trademark No. 3838347 registered on August 24, 2010 in classes 35 and 38; Chinese trademark No. 6364655 registered on June 28, 2010 in class 35.

The Complainant has advertised and promoted its NEWEGG trademarks via online and print outlets since 2001 and has made sales of goods and services under these source identifiers with more than USD 2.5 billion revenue in 2010.

The Respondent is an individual based in Hong Kong, China.

The disputed domain name was registered on January 9, 2020 and resolves to a page that has links to various pornography and online gambling platforms.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s NEWEGG trademark because the disputed domain name incorporates the entirety of the NEWEGG trademark.

No rights or legitimate interests

The Complainant claims that the Respondent does not have any license or authorization from the Complainant to use the NEWEGG trademark or to register or use the disputed domain name. The Complainant contends that it does not have any affiliation with the disputed domain name.

The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name because the disputed domain name resolves to a website containing pornography. The Complainant also infers that the Respondent is making profits through the Internet traffic attracted to the website for the disputed domain name.

The Complainant asserts that there is no evidence that the Respondent has been commonly known by the disputed domain name and there is no evidence that shows the Respondent has any registered trademark rights with respect to the disputed domain name.

Registered and used in bad faith

The Complainant contends that the Respondent has registered the disputed domain name in bad faith because the disputed domain name is identical or confusingly similar to the Complainant’s well-known NEWEGG trademark, and the public is likely to be confused into thinking that it is associated with the Complainant.

The Complainant submits that the Respondent is making or seeking to make profits through the Internet traffic attracted to the website for the disputed domain name. The Complainant asserts that the Respondent is seeking to ride on the goodwill of the Complainant’s NEWEGG trademark in an attempt to exploit, for commercial gain, Internet users looking for the Complainant.

The Complainant contends that since the Respondent is using the disputed domain name to operate a website that hosts pornographic content, the disputed domain name was registered and is being used in bad faith. The Complainant claims that linking of the disputed domain name that contains the Complainant’s NEWEGG trademark with a pornographic website might result in the tarnishing of the Complainant’s well-known trademark as the public is likely to be confused into thinking that the disputed domain name is associated with the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <neweggstats.com> is confusingly similar to the Complainant’s mark because the disputed domain name incorporates the Complainant’s NEWEGG trademark in full, followed by the term “stats”. The Complainant’s trademark is clearly recognizable in the disputed domain name. The additional term “stats” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s NEWEGG trademark. The generic Top-Level Domain (“gTLD”) “.com” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 1.11.1.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name.

The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <neweggstats.com> was registered in bad faith and is being used in bad faith.

The Complainant’s NEWEGG trademark was registered worldwide before the registration of the disputed domain name. Further, the Complainant has advertised and promoted its NEWEGG trademark via online and print outlets since 2001. Therefore, the Panel is satisfied that the Respondent must have known the Complainant’s NEWEGG trademark when he/she registered the disputed domain name.

The disputed domain name resolves to a website appearing to provide links to pornography and online gambling services and thereby generating click through revenue. The disputed domain name is being used to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s NEWEGG trademark as to the source sponsorship, affiliation, or endorsement of the services of the website, which falls into paragraph 4(b)(iv) of the Policy.

Under all the circumstances of this case, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s NEWEGG trademark in mind and has used the disputed domain name in bad faith.

For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <neweggstats.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: April 21, 2020