Hill+Knowlton Strategies v. mo xiaoqiang
Claim Number: FA1407001572443
Complainant is Hill+Knowlton Strategies (“Complainant”), represented by Brandie Lustbader of Davis & Gilbert LLP, New York, USA. Respondent is mo xiaoqiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hillknowlton.com>, registered with Bizcn.com, Inc.
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 July 30, 2014; the National Arbitration Forum received payment on July 31, 2014.
On July 30, 2014, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hillknowlton.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 August 8, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@hillknowlton.com. Also on August 8, 2014, 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 September 4, 2014, 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.
PANEL NOTE: Language of the Proceedings
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 in English.
A. Complainant’s Contentions
1. Complainant uses the HILL+KNOWTON mark in connection with marketing and advertising services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,444,408 registered Dec. 3, 2013, filed January 1, 2012). The <hillknowlton.com> domain name is confusingly similar to the mark because the only difference is the removal the “+” and added the generic top-level domain ("gTLD") “.com.”
2. Respondent has no rights or legitimate interests. First, Respondent identifies as “Mo Xiaoqiang” as shown by WHOIS—a name unrelated to the <hillknowlton.com> domain name. Second, Respondent is using the <hillknowlton.com> domain name to promote adult-oriented content. See Compl., at Attached Ex. E.
3. Respondent has registered and used the domain name in bad faith. First, Respondent’s use of the domain name for adult-oriented material shows a bad faith profiting on the likelihood of confusion, as noted by another panel in Tumblr, Inc. v. Customer Domain Web-Oke.nl / WebaWere Internet Solutions BV, FA 1535777 (Nat. Arb. Forum Mar. 3, 2014), stating “with respect to complainant’s trademark TUMBLR, ‘the Panel concludes that Respondent’s alleged use of the xtumblr.com domain name to lead to adult-oriented material shows bad faith registration and use under Policy ¶ 4(b)(iv)’”. Further, Respondent registered the domain name to capitalize on the common mistake that Internet users may make in failing to include the term “and” as in Complainant’s <hillandknowlton.com> domain name.
B. Respondent’s Contentions
1. Respondent’s <hillknowlton.com> domain name is confusingly similar to Complainant’s HILL+KNOWTON mark.
2. Respondent does not have any rights or legitimate interests in the <hillknowlton.com> domain name.
3. Respondent registered or used the <hillknowlton.com> domain name 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.
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.”).
Complainant uses the HILL+KNOWTON mark in connection with marketing and advertising services. Complainant claims the mark has been registered with the USPTO (e.g., Reg. No. 4,444,408 registered Dec. 3, 2013, filed January 1, 2012). The Panel agrees this trademark registration is sufficient evidence of Policy ¶ 4(a)(i) rights in their mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims the <hillknowlton.com> domain name is confusingly similar to the mark because the only difference is the removal the “+” and added the gTLD “.com.” The Panel finds neither of these alterations to sufficiently avoid Policy ¶ 4(a)(i) confusing similarity. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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.”).
First, Complainant claims Respondent identifies as “Mo Xiaoqiang” as shown by WHOIS—a name unrelated to the <hillknowlton.com> domain name. The Panel agrees there is no evidence in the materials provided to suggest Respondent has ever been commonly known by the disputed <hillknowlton.com> domain name under Policy ¶ 4(c)(ii). 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).
Second, Complainant claims Respondent is using the <hillknowlton.com> domain name to promote adult-oriented content. See Compl., at Attached Ex. E. The Panel agrees that the promotion of the materials displayed in Exhibit E is evidence there is no Policy ¶ 4(a)(ii) use here as there is no bona fide offering under Policy ¶ 4(c)(i), or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
First, Complainant claims Respondent’s use of the domain name for adult-oriented material shows a bad faith profiting on the likelihood of confusion, as noted by another panel in Tumblr, Inc. v. Customer Domain Web-Oke.nl / WebaWere Internet Solutions BV, FA 1535777 (Nat. Arb. Forum Mar. 3, 2014), stating “with respect to complainant’s trademark TUMBLR, ‘the Panel concludes that Respondent’s alleged use of the xtumblr.com domain name to lead to adult-oriented material shows bad faith registration and use under Policy ¶ 4(b)(iv)’”. The Panel again notes the domain name does contain materials that might be construed as adult-oriented in nature. See Compl., at Attached Ex. E. The Panel agrees as to the panel in Tumblr, Inc. v. Customer Domain Web-Oke.nl / WebaWere Internet Solutions BV, FA 1535777 (Nat. Arb. Forum Mar. 3, 2014), and find Policy ¶ 4(b)(iv) bad faith here.
Further, Complainant claims Respondent registered the domain name to capitalize on the common mistake that Internet users may make in failing to include the term “and” as in Complainant’s <hillandknowlton.com> domain name. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable for bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hillknowlton.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 16, 2014
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