The One Group LLC v. she deli and she deli
Claim Number: FA1405001557538
Complainant is The One Group LLC (“Complainant”), represented by Michael R. Gilman of Pergament Gilman & Cepeda LLP, New Jersey, USA. Respondent is she deli and she deli (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stk69.com>, registered with 35 Technology Co., Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Hon. Charles K. McCotter, Jr (ret.), the Hon. John Upchurch (ret.), and Debrett G. Lyons, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2014; the National Arbitration Forum received payment on May 5, 2014. The Complaint was submitted in both Chinese and English.
On May 6, 2014, 35 Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <stk69.com> domain name is registered with 35 Technology Co., Ltd. and that Respondent is the current registrant of the name. 35 Technology Co., Ltd. has verified that Respondent is bound by the 35 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 May 6, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 27, 2014 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@stk69.com. Also on May 6, 2014, 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 June 1, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Charles K. McCotter, Jr (ret.), the Hon. John Upchurch (ret.), and Debrett G. Lyons (chair), as the Administrative Panel (the "Panel").
Having reviewed the communications records, 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.
The Panel notes here that the Registration Agreement is written in Chinese, thereby making the language of the proceedings, Chinese. Nonetheless, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in STK and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides restaurant services by reference to the registered trademark STK (e.g., United States Patent and Trademark Office (“USPTO”) Reg. No. 3,188,230, registered December 19, 2006);
2. The disputed domain name was registered on March 3, 2014;
3. The domain name resolves to a website that promotes escort services and exhibits adult-orientated material;
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark;
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 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)(i) of the Policy requires a two-fold inquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under paragraph 4(a)(i) of the Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). Since Complainant provides evidence of its registration of the trademark, STK, with the USPTO, Panel is satisfied that Complainant has trademark rights.
Panel is also satisfied that the disputed domain name is confusingly similar to the trademark. The domain name takes the trademark and adds matter of no source distinguishing value, namely, the gTLD, “.com”, and the letters “69” (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) holding the gTLD trivial and non-distinctive ; see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “she deli and she deli” which does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights and there is no evidence that Complainant has authorized Respondent to use the trademark. Complainant denies any such authorization.
Complainant provides evidence that the domain name directs Internet users to a Korean language website that features escort services and adult-oriented material. Absent an explanatory Response, that is not use of the domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use (see Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) finding that use of <targetstore.net> to redirect Internet users to an adult-oriented website was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Panel finds that Complainant has established a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that burden has not been discharged.
Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant claims that Respondent’s use of the domain name disrupts Complainant’s business and falls under paragraph 4(b)(iii) above. Panel need not engage in the debate as to the scope of the word “competitor” since it has formed the view that the domain name was both registered in bad faith and then used in bad faith.
Albeit that the letters “STK” might be the subject of good faith adoption by more than one trader, there is in the absence of a Response nothing to meet the inference that Respondent targeted Complainant’s trademark. Panel accordingly finds registration in bad faith. Accepting that inference, Panel also finds that the subsequent use of the domain name was in bad faith (see Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003), where the respondent linked <holidayinnakron.com> to an adult-oriented website and the panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
Panel finds registration and use in bad faith and so Complainant has established the third and final aspect of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain name <stk69.com> be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons (chair)
the Hon. Charles K. McCotter, Jr (ret.)
the Hon. John Upchurch (ret.)
Panelists
June 11, 2014
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