Donald Williams v. wangyan hong / wang yan hong
Claim Number: FA1605001674326
Complainant is Donald Williams (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is wangyan hong / wang yan hong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <5285.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2016; the Forum received payment on May 10, 2016. The Complaint was received in both Chinese and English.
On May 11, 2016, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <5285.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. 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 May 16, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 6, 2016 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@5285.com. Also on May 16, 2016, 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 June 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
Complainant is a domain name entrepreneur, or generic domain name reseller. Complainant first purchased the <5285.com> domain name in January 2007, acquiring common law rights in the 5285 mark. Complainant used the 5285 mark to advertise domain name sales through pay-per-click advertising. Respondent’s <5285.com> domain name is identical to the 5285 mark as it includes the entire mark and only adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <5285.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <5285.com> domain name. Rather, the domain name resolves to a website in which Respondent advertises domain names for sale.
Respondent’s registration and use of the <5285.com> domain name to advertise competing products to those of Complainant serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii). Respondent stole the <5285.com> domain name from Complainant in bad faith and for the purpose of profiting from Complainant’s trademark in order to advertise the sale of domain names. On December 9, 2015, the <5285.com> domain name was transferred, without Complainant’s approval, to eName Technology Co., Ltd. Thereafter, Respondent accessed Complainant’s eNom account and changed the contact information for the <5285.com> domain name, effectively taking the domain name from Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Donald Williams of Chicago, IL USA. Complainant does not have any registered rights but claims that he “…owns common law trademark rights in and to the 5285 mark.” Complainant states that he purchased the disputed domain in January 2007 and used it until approximately December 2015 in connection with his provision of domain sales advertisements through pay-per-click advertising. It is unclear whether Complainant is asserting that his mark is “5285” or “5285.com.” Complainant often refers to them interchangeably. It should be noted that the mere initial registration of the <5285.com> did not necessarily establish enforceable trademark rights in the party who registered it, nor in Complainant by merely purchasing the domain name from another at a later time. Domain name registration alone does not effectively establish trademark rights, nor does trademark registration automatically create domain name rights.
Complainant also states, via affidavit, that the historical screenshots, that Complainant provided, do not accurately portray the prior use of the mark. Complainant further states that no authorization was given to transfer the domain name and that the registrar, chosen by Complainant, and used to effectuate the sale and transfer of the domain name to the Complainant is known to be a haven for stolen domain names. Complainant does provide comparisons of the WHOIS data in November 2015 and December 2015 regarding the domain name, which reflects different ownership during the former and latter periods, changes the Complainant states he had nothing to do with. Complainant says the change is a result of Respondent’s hacking and stealing of Complainant’s domain name. Complainant argues that the blame for its loss of the domain name is in part due to its registrar being an alleged haven for domain name thieves. The Panel takes no position on Complainant’s contentions in that regard but does note that the UDRP proceedings are not the forum to resolve conflicts between Complainants and their registrars. The UDRP proceedings are also not the proper forum to assess whether criminal activity has occurred nor is the panel structured to evaluate forensic evidence either in support or contradiction of such criminal allegations.
Respondent is Wangyan Hong / wang yan hong, of Fujian, China. Respondent’s registrar’s address is unlisted. Respondent’s registration of the domain name is disputed as Complainant asserts that Respondent, as a hacker or otherwise, stole the domain name from him in December 2015 or some time in close proximity thereto.
The Panel notes that the <5285.com> domain name was initially registered on or about December 1, 2004.
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(f), 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 (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.”).
Preliminary Issue
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.
Complainant allegedly used the 5285 mark to run tailored ads. Complainant owns no registration of the 5285 mark with any authority. However, previous panels have agreed that to establish Policy ¶ 4(a)(i) rights in a mark, a trademark registration with a governmental authority need not be on record. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Complainant claims that he acquired common law rights in the mark through his use of the mark <5285.com> domain name since January 2007. Complainant did not provide examples of the tailored ads. Complainant contends that previous ownership of a domain name identical to the mark and a continuous use can provide evidence of secondary meaning in a mark.
Complainant is correct that ownership, coupled with extensive use, “can” give rise to secondary meaning. However, Complainant’s ownership and use did not give rise to such here. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning generally requires the claimant indicate length and amount of sales under the trademark, the nature and extent of advertising, and consumer association through surveys and media recognition. Complainant’s evidence is lacking in necessary details. Complainant does assert that it used the domain name from 2007-2015 but is not specific as to how it used the mark other than stating advertising. No particulars about the advertising are provided. Complainant merely alleges through self-serving testimony, without additional support, that it acquired secondary meaning in the facially generic numerical sequence 5285, sufficient to establish enforceable trademark rights. Complainant offers no indication that the public currently associates the alleged mark 5285 with Complainant or his goods or services, or has done so in the past. Complainant also submitted a personally executed affidavit stating that the historical evidence Complainant provided cannot be relied upon as an accurate representation of the prior use of the mark.
The disputed domain was also initially registered prior to Complainant’s ownership in 2007. Complainant does not address the prior registration of the disputed domain name. Generally, a domain name registration prior to the establishment of exclusive rights by a Complainant in a mark precludes a finding that the Complainant has enforceable trademark rights against the Respondent.
Because the Complainant has failed to establish secondary meaning or otherwise adequately support its claim of common law rights in the alleged mark 5285, the Panel finds that the domain name registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant has enforceable rights under the Policy ¶ 4(a)(i). Complainant has not met its initial burden of proving it has rights in the mark 5285. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Forum Dec. 11, 2001) (finding that, without evidence of common law trademark rights, the complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).
The Complainant has NOT proven this element.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel declines to analyze this element.
As the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <5285.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: June 28, 2016
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