Optical Society of America, Inc. v. Shanghai Time Space Expo Co Ltd
Claim Number: FA1501001602050
Complainant is Optical Society of America, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Shanghai Time Space Expo Co Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ofcchina.net>, registered with 35 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2015; the Forum received payment on January 27, 2015. The Complaint was submitted in both English and Chinese.
On February 1, 2015, 35 Technology Co., Ltd. confirmed by e-mail to the Forum that the <ofcchina.net> 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 February 6, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 26, 2015 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@ofcchina.net. Also on February 6, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant
Complainant owns the OFC mark through the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,523,894, registered Feb. 7, 1989). Complainant uses the OFC mark in connection with its education services, specifically, conducting lectures, seminars and conferences in the field of optical fibers. The <ofcchina.net> domain name is confusingly similar to the OFC mark. The domain name contains Complainant’s mark in full, adds the geographic term “China,” and adds a generic top-level domain “.net” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record does not demonstrate that Respondent is commonly known by the domain name. Further, Respondent is not authorized to register or use the domain name or Complainant’s OFC mark. Respondent’s lack of rights or legitimate interests in the <ofcchina.net> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name diverts Internet users to Respondent’s commercial website advertising competing services and products.
Respondent has engaged in bad faith registration and use of the <ofcchina.net> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by offering directly competing services. Additionally, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent registered the domain name with knowledge of Complainant’s rights in the OFC mark, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making Chinese the 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, concludes that the remainder of the proceedings may be conducted in English.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 owns the OFC mark through the USPTO (e.g. Reg. No. 1,523,894, registered Feb. 7, 1989). Complainant uses the OFC mark in connection with its education services, specifically, conducting lectures, seminars and conferences in the field of optical fibers. The Panel concludes that Complainant’s valid registration of the OFC mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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 argues the <ofcchina.net> domain name is confusingly similar to the OFC mark. The domain name contains Complainant’s mark in full, adds the geographic term “China,” and adds a generic top-level domain “.net” to the domain name. Past panels have found that simply adding a geographic term to an otherwise incorporated mark does not distinguish the domain name from the registered mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Past panels have also held that the addition of gTLDs such as “.net” are irrelevant to the analysis of confusing similarity. See 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). The Panel therefore determines that the dipusted domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name. The WHOIS record lists “Shanghai Time Space Expo Co Ltd” as the registrant of record. Further, Respondent is not authorized to register or use the domain name or Complainant’s OFC mark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name. 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).
Complainant asserts Respondent’s lack of rights or legitimate interests in the <ofcchina.net> domain name is evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services and failure to make a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name diverts Internet users to Respondent’s commercial website advertising competing services and products. Past panels have held that the use of a confusingly similar domain name to offer competing services or products does not demonstrate any legitimate interest in the domain name at issue. As the competing services are commercial in nature, Respondent’s disputed domain is not for “legitimate noncommercial or fair use” purposes. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant argues that Respondent has engaged in bad faith registration and use of the <ofcchina.net> domain name. Complainant asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business by offering directly competing services. Past panels have found bad faith registration and use under Policy ¶ 4(b)(iii) where respondents use confusingly similar domain names that resolve to websites featuring products or services that compete with the complainant. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). As such, the Panel finds that Respondent’s actions are disruptive and therefore Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant contends Respondent is intentionally attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant argues that Respondent’s website promotes its own conference in the field of optics, the “Shanghai International Optical Fiber Communications Expo 2014,” which is virtually identical to Complainant’s event, “The Optical Fiber Communication Conference and Exposition.” Complainant alleges that Respondent promotes its website in marketing e-mails under the “OFC China” name, causing greater confusion to Internet users. Complainant asserts that Respondent sent its marketing e-mail to Complainant’s members and customers, creating a high likelihood of deception. Complainant argues that these behaviors qualify as bad faith registration and use pursuant to Policy ¶ 4(b)(iv), and past panels have agreed. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). The Panel agrees that Respondent’s efforts fall within the conduct proscribed by Policy ¶ 4(b)(iv), and therefore finds evidence of Respondent’s bad faith registration and use of the disputed domain name.
Complainant asserts Respondent registered the domain name with knowledge of Complainant’s rights in the OFC mark, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant argues that Respondent's offering of competing services under Complainant's famous mark at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ofcchina.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 9, 2015
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