Griffin Technology, Inc. v. xiangrong shi
Claim Number: FA1506001623876
Complainant is Griffin Technology, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is xiangrong shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discountgriffinsurvivor.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2015; the Forum received payment on June 10, 2015.
On June 11, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <discountgriffinsurvivor.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 June 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@discountgriffinsurvivor.com. Also on June 12, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶4(a)(i)
a. Complainant has rights in the GRIFFIN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,938,740, registered on March 29, 2011). Complainant also has rights in the SURVIVOR mark through its registration with the USPTO (e.g. Reg. No. 4,405,866, registered on September 24, 2013).
b. Respondent’s <discountgriffinsurvivor.com> domain name is confusingly similar to Complainant’s GRIFFIN and SURVIVOR marks because it is a combination of the two marks and altered by only the addition of the descriptive word “discount” and the generic top-level domain (‘gTLD”) “.com.”
2. Policy ¶4(a)(ii)
a. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “xiangrong shi” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s marks.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Policy ¶4(a)(iii)
a. Respondent might use the disputed domain name to intentionally attract Internet users to its own website in the future for its own commercial gain.
b. Respondent registered the <discountgriffinsurvivor.com> domain name with actual or constructive knowledge in Complainant’s rights in the GRIFFIN and SURVIVOR marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 NOT been registered and is NOT being used 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 has rights in the GRIFFIN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,938,740, registered on March 29, 2011). Complainant claims rights in the SURVIVOR mark through its registration with the USPTO (e.g. Reg. No. 4,405,866, registered on September 24, 2013). Registration with the USPTO (or a similar governmental authority) demonstrates rights in a mark under 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)). It is not necessary for Complainant to have registered it marks in Respondent’s country (China in this case). All that is required is Complainant have SOME rights SOME where. At this stage of proceedings, it is not necessary for Complainant to prove it has superior rights to Respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant has rights in the GRIFFIN and SURVIVOR marks under Policy ¶4(a)(i).
Complainant claims Respondent’s <discountgriffinsurvivor.com> domain name is confusingly similar to Complainant’s GRIFFIN and SURVIVOR marks because it is a combination of the two marks and altered by only the additions of the word “discount” and the gTLD “.com.” The addition of “.com” is disregarded in a Policy ¶4(a)(i) analysis because all domain names must have a TLD. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Adding a TLD does not adequately distinguish the domain name from a complainant’s mark. A domain name made out of multiple marks of a complainant is confusingly similar to that complainant’s marks. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark). The omission of the space is not considered under a Policy ¶4(a)(i) analysis because spaces are prohibited characters in domain names. The word “discount” is descriptive of business in general because Complainant sells goods. Creating a domain name by adding descriptive words to a mark constitutes a confusingly similar domain name under the UDRP. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶4(a)(i)). Respondent’s <discountgriffinsurvivor.com> domain name is confusingly similar to Complainant’s GRIFFIN and SURVIVOR marks pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain name. The WHOIS information lists “xiangrong shi”” as Registrant. There is no obvious connection between Registrant’s name and the domain name. Respondent has failed to provide any evidence to indicate Respondent is commonly known by the domain name. Respondent is not authorized to use Complainant’s marks. Such a lack of evidence is sufficient to conclude a respondent is not commonly known by a domain name 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). Respondent is not commonly known by the <discountgriffinsurvivor.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the domain to provide (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. Complainant offers no evidence to support this allegation, forcing the Panel to conduct inquiries beyond the record. Respondent’s domain name resolves to a GoDaddy dynamic parking web page. Cleary, such a web page does not constitute bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant’s initial claim is Respondent may well build a competing web site in the future. This Panel will not speculate about what might, or might not, occur in the future. The Panel is only concerned with what has happened. Therefore, this Panel will not consider what might happen in the future when it evaluates this (or any other) case. There is no competing web site at present.
Complainant claims Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the GRIFFIN and SURVIVOR marks. Complainant claims positioning the two marks together in a single domain name “clearly” indicates Respondent knew of Complainant’s marks. This Panel does not accept the logic of that argument. There must be at least a scintilla which suggests Respondent actually knew of Complainant’s marks. This logic is too attenuated to prove actual knowledge. Most Panels will not find bad faith even based upon constructive knowledge. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).
The Panel is now in a quandary. Complainant is represented by counsel. The Panel will often assist pro se parties to formulate the issues because of their inexperience. While this Panel might focus on the fact Respondent uses a GoDaddy dynamic parking page and likely gets a benefit from the “click though” links (even if only for free web hosting), Complainant’s counsel did not mention the fact. Presumably, Complainant’s counsel had a good reason for doing so. This Panel must accept counsel’s tactical decision. Given this Panel has already conducted an investigation outside the record, this Panel believes it would constitute error to sua sponte construct legal arguments for Complainant’s benefit based upon those investigations.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant may start another Proceeding alleging additional arguments if it chooses. This decision is not intended to be res judicata.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <discountgriffinsurvivor.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 10, 2015
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