WBC Group, LLC v. lupie jet
Claim Number: FA1606001678468
Complainant is WBC Group, LLC (“Complainant”), represented by Donna M. Klett of Pearne & Gordon LLP, Ohio, USA. Respondent is lupie jet (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dcaligned.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2016; the Forum received payment on June 7, 2016.
On June 8, 2016, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <dcaligned.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@dcaligned.com. Also on June 8, 2016, 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 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions:
1. Complainant uses the DCALIGNED mark in connection with its business of providing informational materials for professionals within the field of chiropractic medicine.
2. Complainant owns common law rights in the mark that predate Respondent’s registration and use of the disputed domain name.
3. The <dcaligned.com> domain name is identical to the DCALIGNED mark as it fully incorporates Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <dcaligned.com> domain name. Respondent is not commonly known by the disputed domain name. See Compl., at attached Ex. H. Additionally, Respondent does not make a bona fide offering of any goods or services through the disputed domain name or provide a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to host an inactive website displaying an error message.
5. Respondent has registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith registration and use; Pablo Park, the original registrant of the domain, registered the domain on December 7, 2015, just days after Complainant filed a trademark application for the DCALIGNED mark with the United States Patent and Trademark Office (“USPTO”). Park later transferred the domain to Respondent on April 27, 2016. This pattern repeated itself with other trademarks, namely BLACKSMITH ANALYTICS, ENERGY ELEGANT, and INFLAME ENTERTAINMENT. Further, Respondent had knowledge of Complainant’s rights in the DCALIGNED mark at the time of the registration of the disputed domain name. Finally, the timing of Respondent’s acquisition of the disputed domain indicates that Respondent has engaged in opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing informational materials for professionals within the field of chiropractic medicine.
2. Complainant has established that it has common law rights in the DCALIGNED mark that predate Respondent’s registration and use of the disputed domain name.
3. The disputed domain name was registered on December 7, 2015 and transferred to Respondent on April 27, 2016.
4. The disputed domain name does not resolve to an active website.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the DCALIGNED mark in connection with its business of providing informational materials for the field of chiropractic medicine. Complainant argues that it has acquired common law rights in the DCALIGNED mark under Policy ¶ 4(a)(i). Panels have routinely held that a complainant can establish rights in a mark through continuous and exclusive use of the mark in commerce, and that a mark need not be registered with a trademark authority. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant argues that because the DCALIGNED mark has been continuously and exclusively used by Complainant in connection with its informational materials and website since at least April 1, 2015, it has demonstrated common law rights in the mark for purposes of Policy ¶ 4(a)(i). In that regard, Complainant has submitted a great deal of material showing extensive use of DCALIGNED in Complainant’s publications in such a way that it must have come to the attention of the community to which it is addressed and come to be seen as exclusively the mark of Complainant’s business. See Compl., at Attached Exs. B and C. Panels have found that use of a mark for an extended period of time in such a way demonstrates secondary meaning and the Panel so holds on the evidence in the present case. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”). Accordingly, as the Panel agrees with Complainant’s submission, the Panel finds that Complainant has demonstrated common law rights in the DCALIGNED mark pursuant to Policy ¶ 4(a)(i) from a time prior to the registration of the disputed domain name.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DCALIGNED mark. Complainant argues that the <dcaligned.com> domain name is identical to the DCALIGNED mark as it fully incorporates Complainant’s mark and merely adds the gTLD “.com.” The Panel agrees that the addition of a gTLD does not remove Respondent’s domain name from the realm of confusing similarity in relation to Complainant’s DCALIGNED mark pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s DCALIGNED mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DCALIGNED mark and to use it in its entirety in its domain name;
(b) The disputed domain name was registered on December 7, 2015 and transferred to Respondent on April 27, 2016;
(c) The disputed domain name is used to host an inactive website display;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <dcaligned.com> domain name. Complainant submits that Respondent is not commonly known by the disputed domain name, Respondent is not affiliated with Complainant, and Complainant did not give Respondent authorization to use the DCALIGNED mark. The Panel notes Complainant’s Exhibit H, the WHOIS information regarding the disputed domain name, listing “lupie jet” as registrant of record. The Panel also notes that Respondent has failed to submit a Response in this proceeding. Therefore, in light of the available evidence, the Panel holds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark);
(f) Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, through the <dcaligned.com> domain name. Rather, Complainant contends that the domain name resolves to an inactive website displaying an error message that indicates that the page cannot be displayed. The Panel has tested the domain name and finds that it does not resolve to an active website. Panels have found that inactive use of a disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent’s use of the <dcaligned.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for
establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in a pattern of bad faith registration and use. In so arguing, Complainant asserts that Pablo Park, the original registrant of the domain, registered the domain just days after Complainant filed a trademark application with the USPTO. Further, Complainant alleges that Park later transferred the domain to Respondent on April 27, 2016. Complainant contends that Respondent has engaged in a pattern of bad faith registration and use because the aforementioned domain registration by Pablo Park and subsequent transfer of the domain to Respondent has been repeated with other marks, namely BLACKSMITH ANALYTICS, ENERGY ELEGANT, and INFLAME ENTERTAINMENT. The Panel notes that Policy ¶ 4(b)(ii) recognizes a pattern of bad faith registration and use under one of two scenarios: first, where a respondent registers multiple domain names in a current proceeding, and second, where a respondent has prior adverse UDRP rulings against it. See Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). This proceeding includes just one domain name, and Complainant does not allege that Respondent has been the subject of prior adverse UDRP rulings. However, Respondent’s modus operandi and intention are clear enough from the meticulous research undertaken on behalf of Complainant and presented to the Panel to the effect that the intention of the original registrant and probably Respondent as well was to register domain names matching trademarks for which applications had been filed. The Panel therefore finds that Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). In any event, Respondent’s conduct can be described only as being in bad faith.
Second, Complainant argues that Respondent had at least constructive knowledge of Complainant's rights in the DCALIGNED mark at the time it registered the domain name. Complainant argues that the timing of Respondent’s registration of the domain name in comparison to the timing Complainant’s USPTO trademark application indicates that Respondent had knowledge of Complainant's mark and rights. Indeed, Complainant asserts in its Complaint that “[i]t is simply impossible for Respondent or the original registrant to have registered the identical coined terms as domains by coincidence, let alone at nearly the same time.” 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 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 (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 (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"). DCALIGNED is clearly a coined term and the original registrant must have known that it would, in the usual course of events, become a registered trademark and probably already was a common law trademark or business name; otherwise, it is hard to see a rational explanation for registering the domain name at all.
Third, Complainant alleges that Respondent’s registration and use was opportunistic based on the timing of the registration of the domain name. Complainant alleges that Respondent is engaged in a scheme with the original registrant, Pablo Park, who registered the domain name five days after Complainant’s trademark application was filed, and two days after the application became public. According to Complainant, the domain name was transferred to Respondent on April 27, 2016. Although the registration of the domain name was some months after Complainant filed for protection of its mark with the USPTO, the Panel finds that the probability is that this was part of a bad faith attempt to compromise Complainant’s interests and trademark and do damage to it for profit and that this amounts to bad faith registration and use within Policy ¶ 4(a)(iii). Complainant has submitted a lot of detail about the history of the domain name and it leads the Panel to the conclusion that Respondent was in cahoots with Pablo Park for a motive that was based on bad faith intentions and primarily to make money.
Fourth, Complainant asserts under the Policy ¶ 4(a)(ii) section that Respondent’s domain currently resolves to an inactive website. The Panel has tested the disputed domain name and finds that it does not resolve to an active website. Panels have determined that a Respondent’s failure to make any active use of a disputed domain is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). As the Panel accepts Complainant’s submission, it finds that Respondent registered and is using the domain in bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <dcaligned.com> domain name using the DCALIGNED mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dcaligned.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 8, 2016
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