Genpak LLC v. DING YUFAN
Claim Number: FA2104001939920
Complainant is Genpak LLC ("Complainant"), represented by David P. Miranda of HESLIN ROTHENBERG FARLEY & MESITI P.C., New York, USA. Respondent is DING YUFAN ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nextgenpak.com>, registered with Xin Net Technology Corporation.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2021; the Forum received payment on April 1, 2021. The Complaint was received in both Chinese and English.
On April 6, 2021, Xin Net Technology Corporation confirmed by email to the Forum that the <nextgenpak.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 April 12, 2021, the Forum served the Chinese and English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 3, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nextgenpak.com. Also on April 12, 2021, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the email 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 May 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. The Complaint and the Written Notice of the Complaint have been served upon Respondent in both English and Chinese, and Respondent has neither responded nor indicated any intent to participate in the proceeding. In addition, the Panel notes that the disputed domain name is composed of English-language elements and targets the trademark of a company located in the United States, suggesting that Respondent is likely conversant in the English language, and in any event does not appear to have any interest in participating in this proceeding. Under the circumstances, the Panel considers it appropriate to conduct the remainder of the proceeding in English. See, e.g., Dell Inc. v. Liu Ying Jun, FA 1928280 (Forum Feb. 15, 2021) (conducting remainder of proceeding in English in similar circumstances).
A. Complainant
Complainant is a food packaging manufacturer with facilities located throughout the United States and Canada and annual revenues exceeding $500 million. Complainant has used the GENPAK trademark in connection with its products since 1969 and owns trademark registrations in the United States and Canada for GENPAK in both standard character and stylized form.
Respondent registered the disputed domain name <nextgenpak.com> in January 2021; Complainant alleges that the domain name was registered in Respondent's name on behalf of an undisclosed person or entity. The domain name does not resolve to a website. Complainant states that Respondent is not commonly known by the domain name, is not affiliated with Complainant, and has not been licensed or authorized to use its mark.
Complainant contends on the above grounds that the disputed domain name <nextgenpak.com> is confusingly similar to its GENPAK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <nextgenpak.com> incorporates Complainant's registered GENPAK trademark, adding the generic term "next" and appending the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Ripple Labs Inc. v. fixup Bugs / Bixin Financial services ltd., FA 1791805 (Forum July 11, 2018) (finding <ripplenext.com> confusingly similar to RIPPLE); LEGO Juris A/S v. Sales Department, D2010-0379 (WIPO Apr. 29, 2010) (finding <legonext.com> confusingly similar to LEGO); Dell, Inc. v. www.HugeDomains.com a/k/a HugeDomains.com c/o This Domain Is For Sale, FA 1106074 (Forum Dec. 14, 2007) (finding <nextdell.com> confusingly similar to DELL). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and Respondent does not appear to have made any active use of the domain name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant 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 domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's mark (possibly on behalf of an undisclosed third party), and does not appear to have put it to any active use. In the absence of any explanation from Respondent, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's well-known mark, perhaps by selling it to Complainant or a competitor thereof, or by using it to impersonate Complainant or to attract Internet users seeking Complainant; and that Respondent is maintaining the domain name for that purpose. See, e.g., Morgan Stanley v. Stacey Wilson / HSBC, FA 1938103 (Forum Apr. 23, 2021) (finding bad faith in similar circumstances); Garrett Transportation I Inc. v. Ben Flajnik, FA 1927368 (Forum Feb. 5, 2021) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nextgenpak.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 10, 2021
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