Universal City Studios LLC v. Gao Hong Mei
Claim Number: FA2205001998325
Complainant is Universal City Studios LLC (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Gao Hong Mei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huanqiudujiaqu.com>, registered with DNSPod, Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2022; the Forum received payment on May 27, 2022. The Complaint and additional submission were received in Chinese.
On May 31, 2022, DNSPod, Inc. confirmed by e-mail to the Forum that the <huanqiudujiaqu.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 June 2, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 22, 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@huanqiudujiaqu.com. Also on June 2, 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 July 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 THE PROCEEDINGS
The Panel notes that the Registration Agreement relating to the disputed domain name is written in Chinese, thereby making the language of the proceedings in Chinese. The Panel has therefore reviewed the applicable rules on the language of proceedings under the UDRP.
Having done so and pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and it determines that the remainder of the proceedings will be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant is a media conglomerate, specifically operating in the television, movie, and amusement park fields. Complainant has rights in the 环球度假区 mark through its registration with the Chinese State Administration for Industry and Commerce (“SAIC”) (Reg. 30,992,902, registered Nov. 21, 2019). See Compl. Ex. E. Respondent’s <huanqiudujiaqu.com> domain name is identical or confusingly similar to Complainant’s 环球度假区 mark as it incorporates the English spelling of the phonetic pronunciation of the mark along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <huanqiudujiaqu.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its 环球度假区 mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant to divert internet users seeking Complainant’s services to the disputed domain name, which in turn ultimately hosts pay-per-click links.
Respondent registered and uses the <huanqiudujiaqu.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant to divert internet users seeking Complainant’s services to the disputed domain name, which in turn ultimately hosts pay-per-click links. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the 环球度假区 mark, and also hid its identity behind a privacy service.
B. Respondent
Respondent did not file a formal Response. However, Respondent replied to the Complaint by way of email correspondence, but the response was completely in Chinese characters. The Respondent submitted that it was using the <huanqiudujiaqu.com> domain name for a fan site dedicated to scenic spots of Universal Studios. It also offered to sell the disputed domain name to Complainant for $9800.
1. Complainant is a United States company which is a famous media conglomerate, specifically operating in the television, movie, and amusement park and resort fields.
2. Complainant has established its rights in the 环球度假区 mark through its registration of the mark with the Chinese State Administration for Industry and Commerce (“SAIC”) (Reg. 30,992,902, registered Nov. 21, 2019).
3. The evidence shows that Respondent’s <huanqiudujiaqu.com> domain name is identical and/or confusingly similar to Complainant’s 环球度假区 mark as it incorporates the English spelling of the phonetic pronunciation of the mark along with the “.com” generic top-level domain (“gTLD”).
4. The evidence shows that the domain name is not used for a fan site or for any other legitimate activity. Respondent has used the domain name to pass itself off as Complainant to divert internet users seeking Complainant’s well-known services to the disputed domain name, which in turn ultimately hosts pay-per-click links intended by Respondent to make money by trading on Complainant’s name and so that it can successfully sell the domain name to 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the 环球度假区 mark through its registration with the SAIC (Reg. 30,992,902, registered Nov. 21, 2019). See Compl. Ex. E. Registration with the SAIC is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Citigroup Inc. v. 刘军, FA 1716803 (Forum Mar. 27, 2017) (“Registration with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i).”). Therefore, as the Panel agrees, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 环球度假区 mark. Complainant argues that Respondent’s <huanqiudujiaqu.com> domain name is identical or confusingly similar to Complainant’s 环球度假区 mark. Under Policy ¶ 4(a)(i), incorporating a phonetically identical version of a mark along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the complainant’s YAHOO mark). Complainant submits that the vocal pronunciation of the Chinese characters in the 环球度假区 mark is spelled ““huan qiu du jia qu”, the spelled letters of the domain name. Therefore, as the Panel agrees, it finds Respondent’s domain name is identical and/or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’ s 环球度假区 mark and to use it in its domain name, so that the vocal pronunciation of the Chinese characters in the 环球度假区 mark is spelled ““huan qiu du jia qu”, the spelled letters in the domain name;
(b) Respondent registered the disputed domain name on May 9, 2020;
(c) the evidence shows that Respondent has used the domain name to pass itself off as Complainant to divert internet users seeking Complainant’s well-known services to the disputed domain name, which in turn ultimately hosts pay-per-click links intended by Respondent to make money by trading on Complainant’s name and so that it can successfully sell the domain name to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <huanqiudujiaqu.com> domain name, nor has Complainant authorized or licensed Respondent to use its 环球度假区 mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Gao Hong Mei”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <huanqiudujiaqu.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as Complainant and attract internet users to a website with pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark). Complainant provides copies of the disputed domain name’s resolving website, as well as its own official English language website, which it argues is copied by the disputed domain name’s resolving website in order to attract users seeking Complainant’s services, who will ultimately be redirected to popular third party websites that will pay Respondent click-through fees. Compare Compl. Exs. F-1 – F-3 with Compl. Exs. D-1 – D-4. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
Respondent has submitted in reply that it is using the domain name as a fan site and that this gives it a right or legitimate interest in the domain name. However, is not sufficient simply to allege that a domain name is being used for a fan site without proving that it is one. The Panel does not accept that Respondent has shown that it is using the domain name for a fan site or that it ever had the intention of so doing. The Panel accepts all of the arguments of Complainant as to why it should reject Respondent’s contention. The facts do not support Respondent’s contention and, in any event, in substance Respondent is clearly trying to impersonate Complainant and invoke its iconic facilities so that it can trade on the good name of Complainant and make money from doing so.
The Panel therefore finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <huanqiudujiaqu.com> domain name in bad faith by offering it for sale. Under Policy ¶ 4(b)(i), past panels have found bad faith where the Respondent offers a domain name for sale and registered the domain name with the intent to sell it. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot of correspondence from Respondent, where Respondent appears to offer the domain name for sale for $9800 after Complainant reached out to Respondent to inquire about resolving the dispute. See Compl. Additional Submission Annex. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent registered and uses the <huanqiudujiaqu.com> domain name for bad faith disruption for commercial gain. Under Policy ¶ 4(b)(iii) and (iv), using a disputed domain name to pass itself off as Complainant and host parked, pay-per-click links is generally considered evidence of bad faith disruption for commercial gain. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see additionally Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which it argues show Respondent copying Complainant’s website in order to attract users seeking Complainant’s services, who will ultimately be redirected to popular third party websites that will pay Respondent click-through fees. Compare Compl. Exs. F-1 – F-3 with Compl. Exs. D-1 – D-4. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant argues that Respondent registered the <huanqiudujiaqu.com> domain name with bad faith actual knowledge of Complainant’s rights in its marks. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be demonstrated through Respondent’s incorporation of a mark into a domain name, as well as its use of the disputed domain name’s resolving website. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). The Panel notes that the English spelling of the phonetic pronunciation of the 环球度假区 mark is incorporated into the domain name, and also notes Complainant’s screenshots of the disputed domain name’s resolving website, which it argues show Respondent copying Complainant’s website in order to attract users seeking Complainant’s services, who will ultimately be redirected to popular third party websites that will pay Respondent click-through fees. Compare Compl. Exs. F-1 – F-3 with Compl. Exs. D-1 – D-4. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent’s bad faith is further shown by its use of a WHOIS privacy service. Use of a privacy service to shield one’s identity on WHOIS may contribute to an independent finding of bad faith under Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”); see also Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel notes Respondent’s information was initially hidden behind a WHOIS Privacy service. See WHOIS Information. Therefore, as the Panel agrees, it finds Respondent’s use of a privacy service contributes to a finding of bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent’s claim that the disputed domain name is a fan site is both inaccurate and even if it was such a site, does not negate a finding of bad faith. Past Panels have found in certain instances that unauthorized use of a Complainant’s mark is not necessarily justifiable even for use in an alleged fan site. See Harrison v. LOVEARTH.net, FA 97085 (Forum June 4, 2001) (“This Panel is persuaded . . . that the greater weight of authority and the better rule is to the effect that ‘fan sites’ . . . do cause confusion as to their source, sponsorship, affiliation, or endorsement vis-à-vis the celebrity.”) (Response); see also Spacey v. Alberta Hot Rods, FA 114437 (Forum Aug. 1, 2002) (finding bad faith registration and use of the <kevinspacey.com> domain name because the respondent lacked rights and authorization to use the complainant's name, “Kevin Spacey,” and where the respondent pointed the name to an unauthorized fan website) (Response). Complainant argues that its screenshots show the website is not in fact, a fan site, but even if it was, it is still designed to confuse internet users into believing Respondent is Complainant. As the Panel agrees, it finds Respondent nonetheless registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huanqiudujiaqu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 7, 2022
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