Apeel Technology, Inc. v. Lei Shi
Claim Number: FA2009001913432
Complainant is Apeel Technology, Inc. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., United States of America. Respondent is Lei Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apeelssciences.com>, registered with Cloud Yuqu 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2020; the Forum received payment on September 23, 2020. The Complainant was received in English.
On September 23, 2020, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <apeelssciences.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu LLC registration agreement 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 September 29, 2020, the Forum served the English language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of October 19, 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@apeelssciences.com. Also on September 29, 2020, the English and Chinese language 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 October 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Registration Agreement is written in Chinese. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Pursuant to UDRP Rule 11(a), the Panel finds that Complainant has shown it is reasonable to conclude that Respondent is conversant and proficient in the English language. Thus, the Panel finds that the proceeding should be in English.
A. Complainant
1. Complainant, Apeel Technology, Inc., develops plant-derived products that allow produce suppliers to maintain produce quality and extend shelf life. Complainant has rights in the APEEL SCIENCES mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,740,050, registered on April 30, 2019).
2. Respondent’s <apeelssciences.com>[i] domain name is confusingly similar to Complainant’s mark because it contains the entire APEEL SCIENCES mark and merely adds an additional “s” and the “.com” gTLD.
3. Respondent does not have rights or legitimate interests in the <apeelssciences.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed Respondent to use the APEEL SCIENCES mark.
4. Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has made no demonstrable preparations to use the domain name.
5. Also, Respondent’s offer to sell the domain name to Complainant further indicates Respondent lacks rights and legitimate interests in the domain name.
6. Respondent registered and uses the <apeelssciences.com> domain name in bad faith. Respondent offers the domain name for sale and engages in a pattern of bad faith registration.
7. Additionally, Respondent engages in typosquatting, which is itself evidence of bad faith.
8. Furthermore, Respondent inactively holds the domain name as it resolves to an inactive webpage.
9. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the APEEL SCIENCES mark based on the fame and distinctiveness of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the APEEL SCIENCES mark. Respondent’s domain name is confusingly similar to Complainant’s APEEL SCIENCES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <apeelssciences.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights in the APEEL SCIENCES mark based on registration with the USPTO (e.g., Reg. No. 5,740,050, registered on April 30, 2019). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Because Complainant provides evidence of registration of the APEEL SCIENCES mark with the USPTO, the Complainant has shown that it has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <apeelssciences.com> domain name is confusingly similar to Complainant’s mark because it contains the entire APEEL SCIENCES mark and merely adds the letter “s” and the “.com” gTLD. The addition of a letter and gTLD to a mark does not negate any confusing similarity between a domain name and mark under Policy ¶ 4(a)(i). See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Further, the <apeelssciences.com> domain name is merely a typosquatted version of Complainant’s APEEL SCIENCES mark. Thus, the Panel holds that the domain name is confusingly similar to the APEEL SCIENCES mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <apeelssciences.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <apeelssciences.com> domain name because Respondent is not commonly known by the domain name and Complainant has not authorized or licensed Respondent to use the APEEL SCIENCES mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information lists “Lei Shi” as the registrant and no information suggests Complainant has authorized Respondent to use the APEEL SCIENCES mark. Thus, the Panel holds that Respondent is not commonly known by the <apeelssciences.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <apeelssciences.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has made no demonstrable preparations to use the domain name. Failure to make active use of a domain name incorporating the mark of another and an offer to sell the domain name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides screenshots showing the <apeelssciences.com> domain name resolves to an inactive webpage with an error message. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also argues that Respondent lacks rights and legitimate interests in the <apeelssciences.com> domain name because Respondent offers the domain name for sale at an excessive price. Under Policy ¶ 4(a)(ii), a respondent’s offer to sell a domain name for a price greater than out of pocket costs indicates that a respondent lacks rights or legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Complainant provides a copy of an email from Respondent in which Respondent offers to sell the <apeelssciences.com> domain name to Complainant for $1,350. This is a further reason why Respondent lacks rights and legitimate interests in the <apeelssciences.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s history of registering domain names containing famous marks evidences Respondent’s bad faith registration and use of the <apeelssciences.com> domain name. Per Policy ¶ 4(b)(ii), a respondent’s previous registration of multiple infringing domain names indicates bad faith registration and use, as does registering a domain name to prevent a complainant from reflecting its mark in the same domain name. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see additionally Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). Complainant has provided evidence of numerous other domain names Respondent has registered that contain famous mark and Complainant has also provided evidence that Respondent has prevented Complainant from owning a domain corresponding with its APEEL SCIENCES mark. Therefore, the Panel finds that Respondent engages in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Additionally, Complainant contends that Respondent’s bad faith is evidenced by Respondent’s use of typosquatting. Under Policy ¶ 4(a)(iii), typosquatting is itself evidence of bad faith. See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014) (“Respondent adds an additional letter ‘v’ to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”). Complainant argues that by simply adding the letter “s” to Complainant’s APEEL SCIENCES mark Respondent intends to capitalize on Internet users who mistype Complainant’s own “apeelsciences.com” domain. Thus, the Panel finds bad faith registration and use per Policy ¶ 4(a)(iii).
Furthermore, Complainant also argues that Respondent registered and uses the <apeelssciences.com> domain name in bad faith because Respondent inactively holds the domain name. Failure to make active use of a domain name incorporating the mark of another and the resolving webpage indicates bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The record contains screenshots of the resolving webpage for the <apeelssciences.com> domain that show an error message. Therefore, the Panel may finds bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the APEEL SCIENCES mark based on the fame and distinctiveness of the mark. Actual knowledge may be found when a mark is famous and well known. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant provides numerous examples of media coverage that indicate Complainant’s products are known worldwide and argues that due to its success and the fact that the APEEL SCIENCES mark is a coined term, Respondent must have known of Complainant’s rights in the mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the APEEL SCIENCES mark, which is further evidence of bad faith registration.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apeelssciences.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 30, 2020
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