BR IP Holder LLC v. Zhichao Yang
Claim Number: FA2201001980472
Complainant is BR IP Holder LLC (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baskinrobbinscareers.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 January 14, 2022; the Forum received payment on January 14, 2022. The Complaint was received in English.
On January 17, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <baskinrobbinscareers.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 January 18, 2022, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of February 7, 2022 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@baskinrobbinscareers.com. Also on January 18, 2022, the Chinese and English 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 February 14, 2022, 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
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. 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). Complainant contends the proceedings should be in English because the <baskinrobbinscareers.com> domain name incorporates the English term “careers,” the domain name resolves to a website in English, and Respondent is a serial cybersquatter with previous UDRP proceedings in English. The Panel agrees and the proceedings will be conducted in English.
A. Complainant
1. Complainant, BR IP Holder LLC, a subsidiary of the Dunkin’ Brands company, is the owner of the distinctive and famous BASKIN-ROBBINS trademark. Complainant has rights in the BASKIN-ROBBINS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,371,672, registered Nov. 19, 1985).
2. Respondent’s <baskinrobbinscareers.com>[i] domain name is confusingly similar to Complainant’s BASKIN-ROBBINS mark as it merely removes the hyphen from the mark and adds the generic term “careers” and the “.com” generic top-level domain (“gTLD”) to form the domain name.
3. Respondent lacks rights and legitimate interests in the <baskinrobbinscareers.com> domain name. Respondent is not commonly known by the domain name. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to divert users via pay-per-click hyperlinks.
4. Respondent registered and uses the <baskinrobbinscareers.com> domain name in bad faith. Respondent engages in a pattern of bad faith based on 235 previous UDRP proceedings against Respondent.
5. Additionally, Respondent uses the domain name to host pay-per-click hyperlinks.
6. Finally, Respondent had actual knowledge of Complainant’s rights in the BASKIN-ROBBINS mark based on the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BASKIN-ROBBINS mark. Respondent’s domain name is confusingly similar to Complainant’s BASKIN-ROBBINS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <baskinrobbinscareers.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 BASKIN-ROBBINS mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,371,672, registered Nov. 19, 1985). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Phusion Projects, LLC vs. Ferg / Ferg Ferg, FA 1912001874943 (Forum Jan. 8, 2020) (“Complainant’s USPTO registration of its FOUR LOKO mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of registration of the BASKIN-ROBBINS mark with the USPTO, the Panel holds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <baskinrobbinscareers.com> domain name is confusingly similar to Complainant’s BASKIN-ROBBINS mark as it merely removes the hyphen from the mark and adds the generic term “careers” and the “.com” gTLD. The removal of punctuation and the addition of a generic term and a gTLD to a mark does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v. ICS Inc, FA 1721505 (Forum Apr. 18, 2017) (holding that “[t]he removal of the hyphen [from complainant’s TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant”); see also AbbVie, Inc. v. Ethel Mcteer, FA 1921725 (Forum Dec. 17, 2020) (finding the addition of the term “careers” and the “.com” gTLD to complainant’s mark in the <careersabbvie.com> domain name confusingly similar to the ABBVIE mark). Thus, the <baskinrobbinscareers.com> domain name is confusingly similar to the BASKIN-ROBBINS 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 <baskinrobbinscareers.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.) The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <baskinrobbinscareers.com> domain name because Respondent is not commonly known by the domain name. 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 PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies “Zhichao Yang” as the registrant. Thus, Respondent is not commonly known by the <baskinrobbinscareers.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <baskinrobbinscareers.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to divert users via pay-per-click hyperlinks. Using a domain name incorporating the mark of another to divert users to third-parties via pay-per-click hyperlinks 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 Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). The record has screenshots showing the <baskinrobbinscareers.com> domain name resolves to a webpage with various pay-per-click hyperlinks. Thus, the Panel agrees with Complainant and finds that Respondent is not using the <baskinrobbinscareers.com> 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <baskinrobbinscareers.com> domain name in bad faith because Respondent engages in a pattern of bad faith based on 235 previous UDRP proceedings against Respondent. Under Policy ¶ 4(b)(ii), evidence of previous UDRP rulings against a respondent is evidence that respondent engages in a pattern of bad faith registration and use. See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (bad faith found where a search revealed 21 cases, 19 of which resulted in decisions to transfer). Complainant provides evidence that Respondent has been involved in 235 previous UDRP proceedings. Therefore, the Panel agrees with Complainant and finds bad faith per Policy ¶ 4(b)(ii).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the BASKIN-ROBBINS mark based on the fame of the mark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“[T]Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). To support its contention, Complainant provides evidence of the notoriety of the BASKIN-ROBBINS mark. Therefore, the Panel agrees with Complainant and finds Respondent had actual knowledge of Complainant’s rights in the BASKIN-ROBBINS mark.
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 <baskinrobbinscareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 28, 2022
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