The University of Pittsburgh of the Commonwealth System of Higher Education v. qianmengdan
Claim Number: FA2207002004645
Complainant is The University of Pittsburgh of the Commonwealth System of Higher Education (“Complainant”), represented by Michael E. Dukes of Dentons Cohen & Grigsby PC, Pennsylvania, USA. Respondent is qianmengdan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <upmcvaccine.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2022; the Forum received payment on July 18, 2022. The Complaint was received in both Chinese and English.
On July 20, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <upmcvaccine.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 July 25, 2022, the Forum served the Chinese language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 15, 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@upmcvaccine.com. Also on July 25, 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 August 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Language of the Proceedings
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, inasmuch as the domain name here in issue is rendered in English, and that the principle of fundamental fairness embodied in Rule 11(a) have been served by delivery to Respondent of the Complaint and Commencement Notification rendered in Chinese, as well as that Respondent has elected not to respond in this proceeding, the Panel determines both that Respondent is conversant with the English language and that conducting this proceeding in English would not be unfairly disadvantageous to Respondent. For these reasons, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice and economy for us to proceed with the balance of this proceeding in English. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant is a Pennsylvania-based research University.
Complainant holds a registration for the UPMC trademark, which is on file with the Trademark Office Administration for Industry and Commerce (“SAIC”) as Ser. No. 10144317, registered November 21, 2011.
Respondent registered the domain name <upmcvaccine.com> on February 19, 2021.
The domain name is confusingly similar to Complainant’s UPMC mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the UPMC mark for any purpose.
Respondent fails to use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to host third-party pay-per-click links to web pages carrying advertisements for vaccines, so that they are related to Complainant’s products and services.
Respondent profits from the operation of these pay-per-click links.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent has both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Registration [of a trademark] with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy¶4(a)(i).
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <upmcvaccine.com> domain name is confusingly similar to Complainant’s UPMC mark. The domain name incorporates the mark in its entirety, with only the addition of the generic term “vaccine,” which refers directly to complainant’s line of business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of another a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <upmcvaccine.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <upmcvaccine.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the UPMC mark for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “qianmengdan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the <upmcvaccine.com> domain name to host third-party pay-per-click links to web pages carrying advertisements for vaccines, so that they are related to Complainant’s products and services, and that Respondent profits from the operation of these pay-per-click links.
This use is neither a bona fide offering of goods or services by means of the domain name under Policy¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website resolving from a domain name confusingly similar to the mark of a UDRP complainant did not constitute either a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <upmcvaccine.com> domain name, which we have found to be confusingly similar to Complainant’s UPMC mark, is an effort by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy¶4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using it.
See, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005):
The Panel finds the respondent is appropriating .the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy¶4(b)(iv).
See also Vivint, Inc. v. Online Management, FA1403001549084 (Forum April 23, 2014) (finding that a UDRP respondent had registered and was using a disputed domain name in bad faith within the meaning of Policy ¶ 4(b)(iv) where the domain name resolved to a parking page featuring sponsored ads and related links).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(b)(iv).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <upmcvaccine.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 22, 2022
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