Namecheap, Inc. v. huangkuanyou / wubiyan
Claim Number: FA1309001519126
Complainant is Namecheap, Inc. (“Complainant”), represented by Liz Wang of Rome & Associates, A.P.C., California, USA. Respondent is huangkuanyou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nmecheap.com> and <namehceap.com>, registered with eName Technology Co., Ltd.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received payment on September 11, 2013. The Complaint was submitted in both Chinese and English.
On September 12, 2013, eName Technology Co.,Ltd. confirmed by e-mail to the National Arbitration Forum that the <nmecheap.com> and <namehceap.com> domain names are registered with eName Technology Co.,Ltd. and that Respondent is the current registrant of the names. eName Technology Co.,Ltd. has verified that Respondent is bound by the eName Technology Co.,Ltd. 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 September 20, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 10, 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@nmecheap.com and postmaster@namehceap.com. Also on September 20, 2013, the Chinese 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Respondent is not commonly known by the disputed domain names.
ii. Respondent provides links and advertisements for competing website hosting and domain name registration services.
iii. Respondent’s registration and use of the disputed domain names constitutes typosquatting.
i. The domain names were used to redirect traffic to competitors.
ii. Respondent’s domain names that link to Complainant’s competitors is an attempt by Respondent to commercially benefit from the confusion generated by the strong similarity between the domains at issue and Complainant’s NAMECHEAP mark.
iii. Respondent’s registration and use of the domain names to specifically target Internet users who are attempting to reach Complainant but inadvertently misspell the domain name is evidence in and of itself bad faith.
iv. Respondent had knowledge of the famous NAMECHEAP mark.
B. Respondent
Respondent failed to submit a response in this proceeding.
1. Complainant is a United States company that is also one of the most prominent domain name registrars on the web offering domain name registrations and related services.
2.Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NAMECHEAP mark (Reg. No. 4,213,990, registered September 25, 2012, first use in commerce November 9, 2000); and for the NAMECHEAP.COM mark (Reg. No. 3,622,358, registered May 19, 2009, first use in commerce November 9, 2000).
3. Respondent registered the <namehceap.com> and <nmecheap.com> domain names on May 18, 2008. Respondent uses them to provide links and advertisements for competing website hosting and domain name registration services.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the two domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the same Respondent operates the two disputed domain name under two different aliases: huangkuanyou and wubiyan. Complainant notes that the WHOIS information for both domain names reflects that the registrant and contact information of each of the domain names is identical as to all required fields for the registrant, administrative, technical, and billing contact information. Further, Complainant notes that the email address provided for both domain names is identical: “305998201@QQ.com”. See Annex D. Complainant argues that the extensive evidence suggests that both disputed domain names have the same Registrant.
The Panel accepts the submission of the Complainant and the evidence proffered in that respect and finds that the two domain names at issue are commonly owned/controlled by a single Respondent who is using multiple aliases.
Accordingly the Complaint may proceed in its current form.
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(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 respondents 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it is one of the most prominent domain name registrars on the web. Complainant contends that it has become an industry leader in offering competitively priced domain name registrations and related services such as private registration, web hosting, URL forwarding, security features, e-mail forwarding and other functions all related to the registration, management, build-out and administration of domain names. Complainant is the owner of trademark registrations with the USPTO for the NAMECHEAP mark (Reg. No. 4,213,990, registered September 25, 2012, first use in commerce November 9, 2000); and for the NAMECHEAP.COM mark (Reg. No. 3,622,358, registered May 19, 2009, first use in commerce November 9, 2000). See Annex G. The Panel finds that although Respondent appears to reside within China, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it demonstrates rights in the mark in some jurisdiction. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the NAMECHEAP and NAMECHEAP.COM marks with the USPTO sufficiently establishes its rights in the marks under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). However, the Panel also notes that Respondent registered its <namehceap.com> and <nmecheap.com> domain names on May 18, 2008, a year before Complainant registered its NAMECHEAP.COM mark. The Panel finds that even though Respondent registered its <namehceap.com> and <nmecheap.com> domain names a year before Complainant registered its NAMECHEAP.COM mark, Policy ¶ 4(a)(i) does not require that Complainant register its mark with a trademark agency, so long as it demonstrates common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The Panel notes that Complainant first used its NAMECHEAP and NAMECHEAP.COM marks in commerce on November 9, 2000. Complainant argues that it launched its company in 2000, and has since become an industry leader in offering competitively priced domain name registrations. Complainant argues that it registered the domain name <namecheap.com> on August 11, 2000, built out its website, and has conducted its business activity from that web address since that time. Complainant contends that it has devoted considerable funds towards the promotion of its brand and name; specially, it has engaged in Google advertising services, established Twitter and Facebook promotional campaigns, and has developed and aired web-based videos promoting the NAMECHEAP mark as well as the services of Complainant associated therewith. The Panel therefore determines that Respondent has established secondary meaning in its NAMECHEAP and NAMECHEAP.COM marks, proving common law rights in the marks under Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Therefore, the Panel concludes that Complainant has sufficiently established rights in the NAMECHEAP and NAMECHEAP.COM marks pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s NAMECHEAP or NAMECHEAP.COM marks. Complainant argues that Respondent’s <namehceap.com> and <nmecheap.com> domain names are confusingly similar to Complainant’s NAMECHEAP mark because each domain name contains a misspelled version of the mark. The Panel finds that Respondent’s misspelling of the NAMECHEAP mark in its <nmecheap.com> domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).The Panel observes that Respondent has transposes the letters “c” and “h” in Complainant’s NAMECHEAP mark in the <namehceap.com> domain name and has simply omitted the letter “a” in the <nmecheap.com>. The Panel finds that Respondent’s transposition nand omission of letters is irrelevant to a Policy ¶ 4(a)(i) determination. See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). Consequently, the Panel concludes that Respondent’s <namehceap.com> and <nmecheap.com> domain names are confusingly similar to Complainant’s NAMECHEAP mark pursuant to 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), and then the burden shifts to Respondent to show it does have 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.”).
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 NAMECHEAP mark and to use it in its domain names, making only minor spelling alterations, thus enhancing the confusing similarity between the domain names and the trademark;
(b) Respondent has then used the disputed domain names to provide links and advertisements for competing website hosting and domain name registration services;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. In so arguing, Complainant contends that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information indicates that “huangkuanyou” is the registrant of <namehceap.com>, and “wubiyan” is the registrant of <nmecheap.com>. Further, Complainant contends that it has not given Respondent permission to use the NAMECHEAP mark in any way. The Panel notes that Respondent did not submit a Response to refute Complainant’s contentions. In light of the available evidence, the Panel determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant further argues that Respondent’s use of the disputed domain does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant asserts that the disputed domain names resolve to pages that promoted links and advertisements for competing website hosting and domain name registration services. The Panel notes that Respondent provides screen shots in Annex H of the landing pages, which advertise links entitled “website hosting”, “domain name registration”, “GoDaddy #1 domain names” and “domain name”. Complainant asserts that users are subsequently redirected to Complainant’s direct competitors, including GoDaddy.com, Registerfly.com, and 12register.com. Previous panels have determined that a domain name used to promote links of businesses that compete with the complainant does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use, as required by the Policy. For example, in Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panel wrote, “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).” As the present case is comparable, and Complainant has provided screen shots to support its argument, the Panel finds that Respondent’s use of the disputed domain does not constitute 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);
(f)To support its contention further that Respondent lacks rights and legitimate interest in the disputed domain names, Complainant asserts that Respondent’s registration and use of the disputed domain names constitutes typosquatting. Previous panels have used typosquatting behavior as additional evidence that a respondent lacks rights and legitimates interests in the disputed domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel recalls that the disputed domain names <namehceap.com> and <nmecheap.com> contain a misspelled version of the NAMECHEAP mark. The Panel determines that Respondent has engaged in typosquatting behavior, and therefore finds further evidence that Respondent’s use of the disputed domain does not constitute 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that the domain names were used to redirect traffic to competitors resulting in disruption of Complainant’s business. Complainant argues that this disruption supports a finding of bad faith against Respondent. The Panel recalls that Complainant has included Annex H, which shows the landing pages advertise links entitled “website hosting”, “domain name registration”, “GoDaddy #1 domain names” and “domain name”. Complainant asserts that these links redirect users to direct competitors of Complainant’s, including GoDaddy.com, Registerfly.com, and 12register.com. Previous panels have found that the use of domains to redirect Internet users purposefully from the complainant to competitors of the complainant is evidence of bad faith. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii), because Respondent is capturing Internet users seeking to reach Complainant and redirecting them to competing domain registration and web-hosting service providers.
Secondly, Complainant further asserts that Respondent’s domain names that link to Complainant’s competitors is an attempt by Respondent to benefit commercially from the confusion generated by the strong similarity between the domains at issue and Complainant’s NAMECHEAP mark. Further, Complainant presumes that Respondent generates click-through fees from the linked websites. The Panel recalls that Complainant has included Annex H, which shows the landing pages advertise links that compete with Complainant. The Panel infers that the disputed domain names are used by Respondent in an attempt to benefit commercially from the confusion generated by the similarities of the disputed domain names with the NAMECHEAP mark. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thirdly, Respondent’s registration and use of the domain names specifically to target Internet users who are attempting to reach Complainant but inadvertently misspell the domain names is evidence of bad faith. Panels have consistently held that typosquatting is meant to take advantage of typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as Respondent redirects users seeking to reach Complainant.
Fourthly, Complainant argues that Respondent had knowledge of the famous NAMECHEAP mark, and therefore, registered the disputed domain names in bad faith. The Panel notes that although the date of the domain name’s registration predates Complainant’s federal trademark registration, Complainant alleges that it has used the mark since 2000, and has achieved a high degree of distinctiveness in the mark and hence common law trademark rights, submissions with which the Panel agrees. Further, Complainant points out it recently obtained judgment against the domain name at issue in a federal action in the Central District of California; however, requests to have the domain names transferred have been ignored. Complainant asserts that the action was initiated prior to the most recent yearly renewals of the domain names, and as such, argues that Respondent had actual knowledge of Complainant’s rights in the mark at the time of yearly renewal for the disputed domain names. As the Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark, the Panel finds evidence of bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the famous NAMECHEAP mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
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 <nmecheap.com> and <namehceap.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 23, 2013
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