Grouplink Corporation v. Meng Zhang
Claim Number: FA1106001396425
Complainant is Grouplink Corporation (“Complainant”), represented by H. Dickson Burton, Utah, USA. Respondent is Meng Zhang (“Respondent”), represented by Jiangang Joseph Shang, Qiang Gao, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grouplink.com>, registered with TheGreatDomain.CA 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2011; the National Arbitration Forum received payment on June 29, 2011.
On June 30, 2011, TheGreatDomain.CA Inc. confirmed by e-mail to the National Arbitration Forum that the <grouplink.com> domain name is registered with TheGreatDomain.ca Inc. and that Respondent is the current registrant of the name. TheGreatDomain.CA Inc. has verified that Respondent is bound by the TheGreatDomain.CA 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 July 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2011 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@grouplink.com. Also on July 1, 2011, the 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.
A timely Response was received and determined to be complete on July 20, 2011.
On July 25, 2011 Complainant’s Additional Submission was received here.
On July 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Prior to Respondent’s registration of the grouplink.com domain name, Complainant federally registered the mark GROUPLINK in the United States and has continuously owned and used the mark in connection with its goods (i.e., computer software for electronic messaging, workflow, routing and office automation). The certificate of registration of the GROUPLINK mark constitutes “conclusive evidence” of “the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration.” 15 U.S.C. § 1115. Aside from the rights derived from its U.S. registration, Complainant has acquired substantial reputation under common law by virtue of its substantially exclusive and continuous use of its mark since at least as early as March 1995. Complainant also owns, has registered, and uses a domain name that includes the GROUPLINK mark at grouplink.net.
Complainant has invested in widespread advertising and promotion of its GROUPLINK mark in connection with its goods throughout the United States, Western Europe, South Africa, Australia and New Zealand. Complainant has expended tremendous time, money and resources to build this goodwill and, as a result, the mark has become a property of incalculable value.
The grouplink.com domain name is identical to Complainant’s registered trademark for GROUPLINK in sound, appearance and meaning and is, thus, confusingly similar with Complainant’s GROUPLINK mark. In light of Respondent’s use of the grouplink.com domain name, internet users and consumers are likely to be diverted to Respondent’s site and, in addition, are likely to be confused as to the source, sponsorship, affiliation or endorsement of the site.
With respect to Section 4(a)(ii) of the Policy, Complainant asserts that it is the owner of U.S. federal service mark registration for GROUPLINK, as well as the common law rights therein; is the owner of the grouplink.net domain name; and has not licensed or otherwise permitted Respondent to use its mark or to apply for or use any domain name incorporating its mark.
Respondent does not appear to have any rights or legitimate interests in the grouplink.com domain name. A search of the trademark databases of the United States Patent and Trademark Office and SAEGIS does not reveal any registered trademarks or business names for, or incorporating, the wording “grouplink.”
Respondent has not used, nor demonstrated preparations to use, the domain name or a name corresponding to the grouplink.com domain name in connection with a bona fide offering of any goods or services.
Respondent’s true purpose in registering the grouplink.com domain name is to sell it for a profit as evidenced by his offer for sale. An initial e-mail was sent to Respondent on Friday, April 29, 2011, requesting a purchase price. See Annex F. Respondent stated the following: “hello, GROUPLINK.COM - for sale $150000.” Id. Respondent later confirmed that the purchase price was “$150,000.00 USD.” Id. Respondent immediately offered to sell the domain name to Complainant for $150,000, a price that far exceeds the purchase price of the domain name.
Respondent owns the following domain names that do not appear to be used for any legitimate commercial purpose: lottle.com; conca.com; tjnw.com; myouku.com; sjzg.com; and ue100.com. It appears that Respondent registers domain names with the sole purpose of selling them to trademark owners.
Respondent registered the grouplink.com domain name using contact information that appears to be false or, at least, incomplete.
Providing incomplete and/or false contact information is evidence of Respondent’s bad faith in registering a domain name.
B. Respondent
The Complaint provided by the Complainant, clearly shows that the GROUPLINK mark was registered in United States. Trademark has a regional nature and any trade mark registered in one country shall not be protected automatically in another country in accordance with Paris Convention on the Protection of Industrial Property, except for Well-known Trademark recognized by Chinese Courts or Administration for Industry and Commerce, The Complainant has failed to prove its trademark GROUPLINK had been registered in China.
The Respondent registered the name grouplink.com for purpose of preparing to create a website for E-Commerce Business which caters to the customer of group rather than personal customer. The Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
This disputed domain name “grouplink.com” previously was registered with Network Solutions, and the registrant was Credit Suisse Group. However the registrant failed to renew the domain name when it expired. At the time, the Respondent registered this domain name after it went into public domain. So the Respondent is the current registrant.
The Complaint provided by the Complainant indicates that the screenshot is not a real web page, because there is no website address bar on it and copyright declaration on the bottom. Clearly the screenshot was not captured from the website of The Respondent at grouplink.com.
C. Complainant’s Additional Submission
The Complainant submitted an additional submission on July 25, 2011 in the form of an Affidavit by Tracey Harrach, Attorney for Complainant, in which she states that she spoke with investigator Alicia Clark at Marksmen, Inc., an intellectual property investigations service, about the grouplink.com domain name and asked her to send an inquiry. She further states that Ms. Clark responded to her that grouplink.com had submitted an asking price for the sale of its domain name in the amount of $150,000.00 (USD).
A trademark registration with the U.S. Patent and Trademark Office has been held to serve as sufficient evidence to establish Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i), regardless of Respondent’s residence or business operations in a different country. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent asserts that GROUPLINK is a generic term and, thus, cannot be protected as a trademark. However, even if the component words of a mark or phrase may be generic or common, in combination, they may still form a protectable mark. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007).
D. Respondent’s Additional Submissions
The Respondent submitted an additional submission on July 29, 2011 in which it restates its position that the Complainant failed to provide evidence that his trademark is recognized in China and Canada and asserts that Complainant had no prior exclusive rights on the generic term “grouplink”. The Respondent also asserts that it has rights and legitimate interests with respect to the domain name and that it did not act in bad faith.
(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.
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.
Complainant contends that it owns valid trademark rights in the GROUPLINK mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,072,592 registered June 17, 1997). Complainant notes that it acquired the trademark registration through assignment on June 12, 2003 from Formlinc Information Systems, LC as evidenced by the Trademark Assignment Abstract of Title in Complainant’s Annex D. The Panel finds that Complainant has rights in the GROUPLINK mark under Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).
Complainant notes that the domain name features its mark entirely while adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel notes that the WHOIS information for the disputed domain name identifies “meng zhang,” as the registrant is not similar to the <grouplink.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s domain name resolves to a website that features various third-party links to goods and services that are of interest to Complainant’s customers such as, help desk software, customer service software, time tracking software, and contact management. Complainant further argues that Respondent is using the domain name to collect click-through revenue from the businesses advertised on its website. The Panel finds that Respondent is not using the disputed 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002).
Complainant alleges that Respondent’s true purpose and intent in registering the domain name was to sell it for profit. To support its claims Complainant offers e-mail correspondence between its registered patent attorney, Tracey Harrach, and an individual named Alicia Clark from a company called Marksmen, which purportedly “investigates, patrols and negotiates IP rights worldwide.” In this e-mail exchange, Ms. Clark quotes the registrant of the disputed domain name as saying, “hello, GROUPLINK.COM – for sale $150000.” The Panel finds that such an offer to sell the domain name, even in response to Complainant’s initial inquiry, is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the respondent offered the domain name for sale to the complainant for $125,000).
Complainant has also alleged that Respondent’s disputed domain name resolves to a website that features various third-party links to goods and services that are of interest to Complainant’s customers, and are in competition with Complainant. The Panel finds that such diversion of Internet users to Complainant’s competitors is indicative of bad faith registration and use under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Further, Complainant argues that Respondent is using the disputed domain name to collect click-through fees from the businesses advertised and linked-to on its website. Complainant contends that Respondent registered the domain name in order to create confusion with Complainant’s mark to profit from such mark in bad faith. The Panel finds that Respondent’s use of the disputed domain name as a links directory website where Respondent presumably profits from such use, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Lastly, Complainant asserts that Respondent “used false and misleading registration information” when it acquired the domain name. The Panel finds that Respondent’s false or incomplete WHOIS information is further evidence of bad faith under Policy ¶ 4(a)(iii). See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000).
The Complainant. Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grouplink.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle Panelist
Dated: August 11, 2011
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