Ascentive, LLC v. Jiang Lixin
Claim Number: FA1202001428642
Complainant is Ascentive, LLC (“Complainant”), represented by Alexis Arena of Flaster/Greenberg, P.C., Pennsylvania, USA. Respondent is Jiang Lixin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gangangansoku.net>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2012; the National Arbitration Forum received payment on February 8, 2012.
On February 8, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <gangangansoku.net> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 February 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2012 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@gangangansoku.net. Also on February 9, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <gangangansoku.net> domain name is identical to Complainant’s GANGANGANSOKU mark.
2. Respondent does not have any rights or legitimate interests in the <gangangansoku.net> domain name.
3. Respondent registered and used the <gangangansoku.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ascentive, LLC, develops and sells computer software products in counties around the world, including products offered under its GANGANGANSOKU trademark in Japan. Complainant owns the GANGANGANSOKU mark with the Japanese Patent Office (“JPO”) (Reg. No. 5,451,593 registered November 18, 2011).
Respondent, Jiang Lixin, registered the <gangangansoku.net> domain name on July 5, 2011. Respondent’s domain name resolves to a website that appears to sell competing computer software products.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Preliminary Issue: Res Judicata Under the UDRP
The Panel notes that Complainant has been involved in a prior UDRP case involving the same Respondent and the same domain name as the present proceedings in which its requested relief was denied. See Complainant’s Exhibit E; see also Ascentive, LLC v. Lixin, FA 1413756 (Nat. Arb. Forum Dec. 7, 2011). In the previous matter, the panel found that Complainant did not own protectable rights in the GANGANGANSOKU mark under Policy ¶ 4(a)(i). The previous decision stated that Complainant’s submitted trademark application with the Japanese Patent Office (“JPO”) was not sufficient for Complainant to establish rights under Policy ¶ 4(a)(i). The panel in the previous case did not grant express permission for Complainant to re-file its Complaint. Complainant claims that it has now been granted its trademark application with the JPO as discussed in the decision template document. Complainant cites Nature Path, Inc. v. Structural Integrity Corp., FA 1364285 (Nat. Arb. Forum Feb. 10, 2011), a prior UDRP panel decision authorizing a rehearing of a prior decision under the following circumstances:
[F]our circumstances permit a rehearing of a previously filed complaint that reached a substantive decision: “(1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice.” [Citations omitted.] This Panel concludes that res judicata does not pertain to this case because . . . Complainant argues that it registered the THETA HEALING mark with the United States Patent and Trademark Office (“USPTO”) after the date of the prior UDRP decision (e.g., Reg. No. 3,798,383 issued June 8, 2010). Therefore, the Panel concludes that Complainant’s trademark registration constitutes “the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial.” Accordingly, the Panel finds that factor three . . . applies to the present action and chooses to proceed with this UDRP proceeding, will consider the merits of the case de novo.
See also Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice).
Complainant argues that similarly a “rehearing should be permitted in this case as a registration has now issued and Complainant no longer owns just a pending application for ‘GanGanGanSoku.’” The Panel agrees and finds that it may make a substantive decision under the UDRP in the instant proceeding based upon the cases cited above.
Complainant has submitted evidence to show that it owns a trademark registration with the JPO for its GANGANGANSOKU mark (Reg. No. 5,451,593 registered November 18, 2011). The Panel finds that Complainant has established rights in its mark under Policy ¶ 4(a)(i) through its trademark registration with the JPO. See Moroccanoil, Inc. v. Alter, FA 1355353 (Nat. Arb. Forum Dec. 7, 2010) (finding that a trademark registration with the JPO, among others, was sufficient for complainant to establish rights in its mark under Policy ¶ 4(a)(i)); see also Implus Footcare, LLC v. Ellison, FA 1406760 (Nat. Arb. Forum Oct. 24, 2011) (finding that trademark registrations, including those with the Japanese Patent Office, are sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that the <gangangansoku.net> domain name is identical to Complainant’s GANGANGANSOKU mark. Complainant contends that the addition of a generic top-level domain (“gTLD”) such as “.com,” or as in this instance, “.net,” does not prevent a finding that the domain name is identical to the asserted mark. The Panel agrees and finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent does not have rights or legitimate interests in the <gangangansoku.net> domain name under Policy ¶ 4(a)(ii). Complainant must provide the Panel with a prima facie case in support of its assertions in order to shift the burden of proof to Respondent. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds that Complainant has upheld its burden and established a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). Respondent has chosen not to respond to these proceedings, thereby allowing the Panel to accept Complainant’s allegations as true under Policy ¶ 4(a)(ii). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will evaluate the evidence submitted in making its findings under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name and does not own any trademark or service mark rights in the domain name or mark. The WHOIS information indicates that “Jiang Lixin” is the registrant of the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and other evidence on record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is attempting to capitalize on Complainant’s domain name by advertising and selling competing computer software while using Complainant’s mark and logo. Complainant’s screen shot appears to support this assertion. The Panel finds that such use is 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. However, the Panel must first note that the domain name was registered on July 5, 2011, whereas Complainant cannot establish rights in its mark until November 18, 2011 when it acquired its trademark registration with the JPO. Several previous panels have found that, where a respondent registered a domain name prior to a complainant having protectable rights in its mark, bad faith registration in that instance could not have occurred. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant). Because Complainant has not provided evidence of protectable rights in its asserted mark that predate Respondent’s registration of the domain name, the Panel finds that Complainant has failed to establish bad faith registration under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gangangansoku.net> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: March 20, 2012
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