The RCS Network v. Zhichao
Claim Number: FA2203001990561
Complainant is The RCS Network (“Complainant”), represented by Jonathan Loeb of Rich May, P.C., Massachusetts, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <masssavw.com>, <masssavr.com>, and <msssave.com>, registered with Dynadot, 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 March 31, 2022; the Forum received payment on March 31, 2022.
On April 1, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@masssavw.com, postmaster@masssavr.com, postmaster@msssave.com. Also on April 4, 2022, 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 May 2, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, the RCS Network, is an unincorporated collaborative association of Massachusetts utility companies and energy service providers. Complainant has rights in the MASS SAVE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,136,287, registered Aug. 29, 2006).
2. Respondent’s <masssavw.com>, <masssavr.com>, and <msssave.com>[i] domain names are identical or confusingly similar to Complainant’s MASS SAVE mark, as each domain contains a majority of the MASS SAVE mark, omit a space between the words of the mark, and either remove the letter “A” from the term “MASS,” or change the letter “E” within the term “SAVE” to either an “R” or a “W” before appending the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names as it is not commonly known by the domain names, and is neither an authorized user or licensee of the MASS SAVE mark.
4. Additionally, Respondent fails to use any of the domain names for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, as Respondent uses the domain names to operate websites which display hyperlinks to various third-party websites offering services which compete directly with Complainant’s business.
5. Respondent engaged in typosquatting.
6. Respondent registered and uses the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names in bad faith. Respondent resolves each of the domain names to parked websites offering monetized hyperlinks to Complainant’s competitors. Such use may demonstrate bad faith disruption and attraction to commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MASS SAVE mark. Respondent’s domain names are confusingly similar to Complainant’s MASS SAVE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names and that Respondent registered and uses the domain names 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 asserts rights in the MASS SAVE mark through registration with the USPTO (e.g., Reg. No. 3,136,287, registered Aug. 29, 2006). Registration of a mark with a national trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)). As Complainant provides evidence of its trademark registration with the USPTO, the Panel holds that Complainant has rights in the MASS SAVE mark under Policy ¶ 4(a)(i).
Complainant then argues that Respondent’s <masssavw.com>, <masssavr.com>, and <msssave.com> domain names are identical or confusingly similar to Complainant’s MASS SAVE mark as each domain contains a majority of the mark and only differs by some minor change, such as omitting a space from the mark, removing the letter “A” from the term “MASS,” changing the letter “E” to either an “R” or “W” within the term “SAVE,” and adding the “.com” gTLD. None of these changes negate confusing similarity between the domain names and the MASS SAVE mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Thus, the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names are confusingly similar to Complainant’s MASS SAVE 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 <masssavw.com>, <masssavr.com>, and <msssave.com> domain names. 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 <masssavw.com>, <masssavr.com>, and <msssave.com> domain names as it is not commonly known by the domain names, and is neither an authorized user or licensee of the MASS SAVE mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by an infringing 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).”). Additionally, lack of authorization to use another’s trademark may demonstrate lack of rights in a domain name. 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 WHOIS information of record identifies “Zhichao” as the registrant of the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names, and nothing within the record indicates Complainant authorized Respondent’s use of the MASS SAVE mark. The Panel holds that Respondent is not commonly known by the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names within the meaning of Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent uses the domain names to host parked websites to display hyperlinks to various third-party competitors of Complainant. Using a domain name incorporating the mark of another to host parked websites with pay-per-click hyperlinks to a trademark holder’s competitors does not constitute either a bona fide offer or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving websites as evidence of Respondent’s illegitimate use of the domains. Therefore, Respondent lacks rights and legitimate interests in the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <masssavw.com>, <masssavr.com>, and <msssave.com> domain names in bad faith because the domain names resolve to parked webpages with hyperlinks to Complainant’s competitors. Such use qualifies as both bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Complainant provides screenshots of the resolving websites as evidence Respondent uses the domain names to host hyperlinks which presumably generate click-through revenue. Thus, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
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 <masssavw.com>, <masssavr.com>, and <msssave.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 10, 2022
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