AOL Inc. v. CC Liu
Claim Number: FA1304001495249
Complainant is AOL Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is CC Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techcrunchchina.com>, registered with GODADDY.COM, 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2013; the National Arbitration Forum received payment on April 17, 2013.
On April 18, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <techcrunchchina.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2013 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@techcrunchchina.com. Also on April 19, 2013, 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.
A timely Response was received and determined to be complete on May 9, 2013.
Complainant submitted an Additional Submission, which was received and found to be compliant on May 10, 2013.
On May 20, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Addressing Policy ¶ 4(a)(i), Complainant relies on its rights in the TECHCRUNCH service mark and other marks incorporating the word element “CRUNCH” that are listed below. In support of this claim Complainant has furnished copies of search results in respect of each of the below- listed trademark registrations in an annex to the Complaint.
Complainant submits that it uses its TECHCRUNCH and CRUNCH-based marks in connection with providing online and other services, with a particular emphasis on technology issues and products. These marks are used extensively on Complainant’s websites, including at <www.techcrunch.com> and <www.crunchbase.com>.
Complainant submits that itself and its predecessors-in-interest adopted and began using the TECHCRUNCH mark in connection with providing computer, software and online services since at least as early as 2005. Complainant submits that since their first adoption, the distinctive TECHCRUNCH and CRUNCH marks have been used continuously and extensively by Complainant and its predecessors-in-interest in interstate and international commerce in connection with the advertising and sale of Complainant's goods and services.
Complainant claims to have invested substantial sums of money in developing and marketing its services and each year a substantial number of customers worldwide obtain goods and services from Complainant offered under the TECHCRUNCH and CRUNCH marks, and Complainant submits that millions more are exposed to said marks through advertising and promotion. Complainant argues that because of these substantial advertising expenditures and sales, the distinctive TECHCRUNCH and CRUNCH marks have become well-known and famous among members of the purchasing public.
Complainant submits that the disputed domain name is confusingly similar and nearly identical to the TECHCRUNCH mark and Complainant’s <techcrunch.com> domain name because it consists merely of the addition of the geographically descriptive suffix "China" to Complainant's TECHCRUNCH service mark and <techcrunch.com> domain name.
Addressing Policy ¶ 4(a)(ii), Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not named or otherwise commonly known as the <techcrunchchina.com> domain name. Complainant asserts that it has never licensed or otherwise authorized Respondent to make free use of the TECHCRUNCH mark in domain names.
Complainant further submits that Respondent has no other rights or legitimate interests in the domain name but has sought to hold this domain name out for sale to Complainant.
Addressing Policy ¶ 4(a)(iii) Complainant submits that Respondent has registered and is using the disputed domain name in bad faith.
In an annex to the Complaint, Complainant has submitted copies of correspondence between its counsel and Respondent as evidence that Respondent registered, used and is offering to sell the disputed domain name in bad faith to capitalize on and profit from Complainant’s marks. Complainant submits that given the similarity of the disputed domain name and Complainant’s service mark, the fact that Complainant has for many years published stories about China on TECHCRUNCH, and the fame and inherent distinctiveness of the TECHCRUNCH and CRUNCH marks, Respondent clearly registered the disputed domain name with actual knowledge of Complainant's trademark rights and the TECHCRUNCH services.
Complainant submits that Respondent's bad faith registration of the disputed domain name is further evidenced by the fact that he apparently purchased the disputed domain name in 2013, many years after the TECHCRUNCH and CRUNCH marks were registered and had become famous and well-known to consumers. In this regard Complainant refers to Whois records which have been annexed to the Complaint which show that the disputed domain name was created on April 19, 2010; on March 19, 2013 it was registered in the name of Abe Li; and as of April 17, 2013 it had been transferred to Respondent.
Complainant submits that Respondent is deemed to have had at least constructive knowledge of Complainant's rights by virtue of the existing trademark registrations. See The Am. Nat’l Red Cross v. Inter-Net Research, Inc. a/k/a Martin Palmer, FA 114438 (Nat. Arb. Forum July 15, 2002). Furthermore Complainant argues that Respondent's actual knowledge of Complainant's trademark rights is demonstrated by the fact that the disputed domain name is nothing more than AOL's TECHCRUNCH trademark and primary domain name <techcrunch.com> with the geographic suffix China.
Complainant further argues that Respondent's bad faith use of the disputed domain name is demonstrated by Respondent's offer to sell the domain name to Complainant. Complainant has adduced copies of communications dated March 19 and April 10, 2013, sent by counsel for Complainant sent to the person then listed in the Whois records as the registrant of the disputed domain name. On April 10, Respondent sent an e-mail reply stating that he had just recently purchased the domain name from the prior owner. The WHOIS records were then updated to show Respondent as the registrant. On April 12, Respondent sent an email to Complainant's counsel stating "If you are interested in buying this domain, we can have a talk."
On April 12 and 15 Complainant’s counsel responded in writing and rejected Respondent's offer to sell the infringing domain name, and requested Respondent to cooperate with an amicable transfer. Respondent did not reply and Complainant had no choice but to file this Complaint to protect its valuable intellectual property.
Complainant submits that by purchasing the disputed domain name from a third party, and then immediately offering to sell it to Complainant, Respondent has made a bad faith use of the disputed domain name in violation of Policy ¶ 4(a)(iii).
Complainant submits that Respondent's bad faith is further demonstrated by his use of false contact information in the Whois records. Specifically, the Whois records do not include a street or mailing address. Respondent has only provided Beijing, China, for his physical contact information. By providing false and incomplete contact information in the Whois records, Respondent is acting in bad faith and attempting to thwart Complainant's attempt to protect its valuable intellectual property.
In summary, Complainant argues that based upon (1) the fame of the TECHCRUNCH and CRUNCH marks; (2) Complainant's trademark registrations and rights for those marks, (3) use of the disputed domain name with a commercial web site; (4) Respondent's use of false and incomplete contact information in the Whois records, (5) Respondent's offer to sell the domain name to Complainant; and (6) the fact that the disputed domain name is an obvious combination of Complainant 's service mark and a geographic term, Respondent cannot in good faith claim that he had no knowledge of Complainant's rights in its TECHCRUNCH or CRUNCH marks. Furthermore, Respondent cannot claim in good faith that he made a legitimate non-commercial or fair use of the infringing domain name or that Respondent is commonly known as TECHCRUNCH.
B. Respondent
In a brief Response, Respondent denies Complainant’s allegations and asserts that his registration of the disputed domain name <techcrunchchina.com> is legitimate. He asserts that he is “the owner of a tech company in China which provides media services for tech startups and investors.” He has furnished a screenshot of a web site to which the unrelated domain name <36kr.com> resolves and states that he operates his business on that website on which he publishes news and industry news on the website. He states that he has plans to build a database of tech startups and a funding platform which will allow him to provide better service for China’s tech startups and the ecosystem as a whole and intends to use the disputed domain name to operate his new business in the future.
Respondent submits that he registered the disputed domain name in good faith for the operation of his business.
C. Additional Submissions
In timely Additional Submissions, Complainant submits that Respondent has failed to adduce evidence of any real and demonstrable preparation to use the disputed domain name <techcrunchchina.com> in furtherance of a bona fide offering of goods or services. Complainant submits that Respondent has failed to provide any evidence to support the assertion that it intends to operate some business through the disputed domain name<techcrunchchina.com>. Complainant argues that Respondent has not shown why it was necessary to incorporate Complainant’s TECHCRUNCH trademark in the disputed domain name.
Addressing the issue of the alleged bad faith registration and use, Complainant submits that since the present Complaint was filed, Respondent has sent two messages to Complainant in which Respondent requested Complainant to buy the domain name for a “reasonable price.” Complainant offered no more than an out-of-pocket expense. Respondent asked Complainant to “offer an appropriate price” and stated that “If AOL wants to develop business in China, we can have a talk on this.”
The disputed domain name was registered on April 19, 2010. On March 19, 2013, it was registered in the name of Abe Li. As of April 17, 2013 it had been transferred to Complainant.
Complainant and its wholly-owned subsidiary TechCrunch, Inc. are the owners of the following USPTO registrations for the service mark TECHCRUNCH, and other similar marks that incorporate the word CRUNCH, each of which is registered on the Principal Register in the name of Complainant’s wholly-owned subsidiary Techcrunch Inc.
· U.S. registered service mark TECHCRUNCH, Reg. No. 4295864, registered on February 26, 2013 for services in international class 42 for “G & S technology research in the field of computer technology, mobile communications and information technology”;
· U.S. registered service mark TECHCRUNCH, Reg. No. 4064062, registered on November 29, 2011 for services in international classes 35, 41 and 42; and
· U.S. registered service mark CRUNCHUP, Reg. No. 4099098, registered on February 14, 2012 for services in international class 41;
· U.S. registered service mark THE CRUNCHIES, Reg. No. 4099095 THE CRUNCHIES, registered on February 14, 2012 for services in international class 41; and
· U.S. registered service mark CRUNCHBASE,Reg. No. 4099078, registered on February 14, 2013 for services in international class 42.
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 has furnished evidence of its rights in the service mark TECHCRUNCH and other similar service marks incorporating the word CRUNCH and used in connection with the provision of services relating to the provision of information about computer technologies, through the above-listed U.S.P.T.O service mark registrations owned by of Complainant’s wholly-owned subsidiary Techcrunch Inc.
This Panel finds that the disputed domain name is confusingly similar to Complainant’s TECHCRUNCH service mark. The disputed domain name consists of Complainant’s TECHCRUNCH mark, which is the dominant element in combination with the descriptive element “China”. For the purpose of comparison the gTLD “.com” extension may be ignored and this Panel finds that the addition of the descriptive element “China” does not serve to distinguish the disputed domain name from Complainant’s mark and may even serve to add to the confusion giving the impression that the domain name is being used by Complainant to provide services in or relating to China.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
It is well established that under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden shifts to Respondent to show that it has such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has made out such a prima facie case by arguing that Respondent is not named or otherwise commonly known as <techcrunchchina.com> and avers that Respondent has never been granted any license or authorization to use of Complainant’s TECHCRUNCH mark.
Respondent identifies himself as CC Liu and only elaborates on his usage of the unrelated <36kr.com> domain name as the address for a web site on which he claims to carry out business.
Respondent asserts that he intends to commence business using the disputed domain name but has failed to adduce any evidence of any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before he received notice of the dispute. In fact there is no evidence of any use of the disputed domain name by Respondent who apparently acquired it only in 2013. The disputed domain name was originally created on April 19, 2010 by a third party and subsequently transferred to Respondent who engaged in correspondence with Complainant’s representative and filed the Response herein.
Under the circumstances, this Panel finds that Respondent has failed to discharge the burden of proof under Policy ¶ 4(a)(ii) and Complainant is entitled to succeed in this second element of the test in Policy ¶ 4(a) also.
This Panel finds that on the balance of probabilities both the original registrant of the disputed domain name and Respondent had actual knowledge of Complainant’s reputation of the TECHCRUNCH service mark when the disputed domain name was first chosen, created and more recently acquired by Respondent. There is no other explanation as to why such a distinctive mark should be chosen.
This Panel further finds that Respondent's use of incomplete contact information in the Whois registration record; Respondent's repeated offers to sell the disputed domain name to Complainant; and the fact that the disputed domain name is an obvious combination of Complainant's service mark and a geographic term are convincing evidence that the disputed domain name was chosen, registered and used in bad faith and intended to refer to and take predatory advantage of Complainant’s goodwill in the TECHCRUNCH mark.
This Panel rejects Respondent’s submission that he acquired the disputed domain name intending to use it to establish a bona fide business. Furthermore this Panel finds on the balance of probabilities that Respondent recently, in 2013, acquired the disputed domain name primarily for the purpose of selling the disputed domain name registration to the Complainant who is the owner of the TECHCRUNCH service mark for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
In the circumstances, this Panel finds that Complainant has satisfied the final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <techcrunchchina.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
James Bridgeman Panelist
Dated: June 5, 2013
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