OBOLEO LTD v. li xiaofen / Abraham B. Rooney / Nina Zhai / Xue Zhou / Phoebe Wu / Cary Yuan / bao chen / yang xiang / summer mc / Danny Yang
Claim Number: FA2007001904340
Complainant is OBOLEO LTD (“Complainant”), represented by John Berryhill, United States. Respondent is li xiaofen (China) / Abraham B. Rooney (Ukraine) / Nina Zhai / Xue Zhou / Phoebe Wu / Cary Yuan / bao chen / yang xiang / summer mc, China / Danny Yang (the United States) (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <secretbenefitslogin.com>, <secretsbenefit.com>, <secretbenefitscom.com>, <secretbenefits.org>, <secretbenefit.net>, <secretbenefit.org>, <secretbenefits.club>, <secretbenefits.biz>, <secret-benefits.org>, <secretswithbenefits.com>, <thesecretbenefits.com>, registered with GoDaddy.com, LLC; Name.com, Inc.; NameCheap, Inc.; NameSilo, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2020; the Forum received payment on July 15, 2020.
On July 15, 2020, July 16, 2020, and July 17, 2020, GoDaddy.com, LLC; Name.com, Inc., NameCheap, Inc., and NameSilo, LLC confirmed by e-mail to the Forum that the <secretbenefitslogin.com>, <secretsbenefit.com>, <secretbenefitscom.com>, <secretbenefits.org>, <secretbenefit.net>, <secretbenefit.org>, <secretbenefits.club>, <secretbenefits.biz>, <secret-benefits.org>, <secretswithbenefits.com>, and <thesecretbenefits.com> domain names are registered with GoDaddy.com, LLC, Name.com, Inc., NameCheap, Inc., and NameSilo, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC, Name.com, Inc., NameCheap, Inc., and NameSilo, LLC have verified that Respondent is bound by the respective registration agreements 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 July 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2020 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@secretbenefitslogin.com, postmaster@secretsbenefit.com, postmaster@secretbenefitscom.com, postmaster@secretbenefits.org, postmaster@secretbenefit.net, postmaster@secretbenefit.org, postmaster@secretbenefits.club, postmaster@secretbenefits.biz, postmaster@secret-benefits.org, postmaster@secretswithbenefits.com, postmaster@thesecretbenefits.com. Also on July 21, 2020, 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 August 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that i) joinder of the Respondents is appropriate because all of the disputed domain names are being used in a common plan or scheme; ii) all of the disputed domain names are enrolled into an affiliate program of a direct competitor of the Complainant in order to misdirect traffic from the Complainant to a competitor; iii) because all of the domain names are intended to channel visitors to a competitor of the Complainant, it is reasonable to conclude that the registrants are identical or acting in concert, and thus consolidation is appropriate; and iv) all the Respondents are ostensibly located in China and claims that it makes no difference whether the Respondents constitute a single individual operating under multiple aliases or a group acting in concert.
The Panel observes that previous panels have found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage” <CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071; Blackhawk Network, Inc. v. Richard Wisneski et al. FA1502001604943 (Forum March, 26, 2015); Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (consolidation of multiple respondents and multiple domain names appropriate where domain names were registered with same registrar and resolved to essentially identical websites>.
The Panel finds that the disputed domain names <secretbenefits.biz> and <secretsbenefit.com> are commonly owned/controlled by a single Respondent.
On the other hand, the Panel notes that the contents of the resolving websites of the disputed domain names <secretbenefitslogin.com>, <secretbenefitscom.com>, <secretbenefits.org>, <secretbenefit.net>, <secretbenefit.org>, <secretbenefits.club>, <secret-benefits.org>, <secretswithbenefits.com> and <thesecretbenefits.com> are not substantially identical; their registrants, technical, administrative, and billing contacts are all different from each other; and thus the Panel finds that Complainant has not sufficiently presented evidence demonstrating that the domain names <secretbenefitslogin.com>, <secretbenefitscom.com>, <secretbenefits.org>, <secretbenefit.net>, <secretbenefit.org>, <secretbenefits.club>, <secret-benefits.org>, <secretswithbenefits.com> and <thesecretbenefits.com> are jointly controlled by a single Respondent who is using multiple aliases.
Therefore, the Panel, under the Forum’s Supplemental Rule 4(c), determines to elect ‘Phoebe Wu’ as Respondent to proceed against the UDRP decision for the domain names <secretbenefits.biz> and <secretsbenefit.com> which are commonly owned by ‘Phoebe Wu.’
The Panel dismisses, without prejudice on the merits, Complaints in relation to the domain names <secretbenefitslogin.com>, <secretbenefitscom.com>, <secretbenefits.org>, <secretbenefit.net>, <secretbenefit.org>, <secretbenefits.club>, <secret-benefits.org>, <secretswithbenefits.com> and <thesecretbenefits.com> which are not commonly owned or controlled by the chosen Respondent.
Hereinafter, the domain names <secretbenefits.biz> and <secretsbenefit.com> are collectively referred to as ‘disputed domain names’ and ‘Phoebe Wu’ is referred to as ‘Respondent.’
A. Complainant
i) Complainant, Obeleo Ltd., is the owner and operator of an online dating website. Complainant has rights in the SECRET BENEFITS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,958,569, registered Jan. 14, 2020). The disputed domain names <secretbenefits.biz> and <secretsbenefit.com> are confusingly similar to Complainant’s SECRET BENEFITS mark because they each contain the mark with minor variations in pluralization.
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s SECRET BENEFITS mark. Additionally, Respondent doesn’t use the disputed domains for any purpose other than to redirect Internet users to competing websites.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent redirects Internet traffic to competitors of Complainant. Additionally, the domain names were registered after Complainant’s site was launched and Complainant had established a reputation. Finally, Respondent must have had knowledge of Complainant’s rights in the SECRET BENEFITS mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain names <secretbenefits.biz> and <secretsbenefit.com> were registered on July 19, 2019 and August 12, 2019 respectively.
2. Complainant has established rights in the SECRET BENEFITS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,958,569, registered Jan. 14, 2020).
3. The date of first use in commerce of Complainant’s mark is March 15, 2016 and its filing date is March 15, 2018.
4. The resolving websites of the disputed domain names redirect Internet traffic to competitors of Complainant.
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”).
Complainant asserts rights in the SECRET BENEFITS mark based upon the registration with the USPTO. (e.g., Reg. No. 5,958,569, registered Jan. 14, 2020). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the SECRET BENEFITS mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s SECRET BENEFITS mark because they each contain the mark with minor variations in pluralization. Changes to a mark in pluralization is insufficient to negate confusing similarity between a mark and a domain name containing that mark under Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (Forum June 23, 2015) (holding the <foresmost.com> domain name confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Thus, the Panel finds that each of the disputed domain names is identical or confusingly similar to the SECRET BENEFITS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not licensed or authorized to use Complainant’s SECRET BENEFITS mark. When no response is submitted, WHOIS information and lack of authorization may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the information of record lists the registrant of the disputed domain names as “Phoebe Wu” and Complainant contends that it has not authorized or licensed anyone to use the SECRET BENEFITS mark in a domain name. Thus, the Panel agrees with Complainant and finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent uses the disputed domains only to redirect Internet users to competing websites. Use of a disputed domain name to divert Internet traffic to a complainant’s competitor is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Complainant provides screenshots from the webpages at each of the disputed domains and notes that the sites directly link to the websites of Complainant’s competitors. Thus, the Panel finds that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and uses the disputed domain names in bad faith.
The Panel notes that the registrations of the disputed domain names (registered on July 19, 2019 and August 12, 2019 respectively) predate the registration date of Complainant’s SECRET BENEFITS mark (registered on January 14, 2020). Complainant submits that it has been using the inherently distinctive “SECRET BENEFITS” mark for online dating since its website was launched in March 2016, and that its reputation has grown since that time. Complainant has provided the historical archives and screenshots of its website respectively captured by Archive.org and DomainTools. The Panel notes that the DomainTools.com screenshot archive shows the graphical layout, as can be seen from the records dated in July 2016 and April 2017. Complainant further contends that it has engaged in substantial promotion of the mark, such as through sponsored articles in online publications such as at Maxim.com (February 6, 2018) and Observer.com (May 8, 2018) shown in its Exhibit. The Panel also notes that the date of first use in commerce of Complainant’s mark is March 15, 2016 as shown in the pertinent certificate of Complainant’s trademark registration and its filing date is March 15, 2018. Therefore, the Panel finds that Complainant can prove the registration of the disputed domain names in bad faith per Policy ¶ 4(a)(iii) even though Respondent’s registrations of the disputed domain names predate the registration of Complainant’s SECRET BENEFITS mark.
Complainant contends that Respondent redirects Internet traffic to competitors of Complainant. Use of a disputed domain name in competition with a complainant is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Complainant provides screenshots of the webpages resolving at the disputed domains and notes that the “join us” and “join for free” buttons present on the sites directly link users to the websites of Complainant’s competitors. The Panel therefore agrees with Complainant and finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel dismisses, without prejudice on the merits, Complaints in relation to the domain names <secretbenefitslogin.com>, <secretbenefitscom.com>, <secretbenefits.org>, <secretbenefit.net>, <secretbenefit.org>, <secretbenefits.club>, <secret-benefits.org>, <secretswithbenefits.com> and <thesecretbenefits.com> which are not commonly owned or controlled by the chosen Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief for the domain names <secretbenefits.biz> and <secretsbenefit.com> shall be GRANTED.
Accordingly, it is Ordered that the <secretbenefits.biz> and <secretsbenefit.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 27, 2020
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