WBC Group, LLC v. mau lio
Claim Number: FA1606001678469
Complainant is WBC Group, LLC (“Complainant”), represented by Donna M. Klett of Pearne & Gordon LLP, Ohio, USA. Respondent is mau lio (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ptaligned.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
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 7, 2016; the Forum received payment on June 7, 2016.
On June 13, 2016, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <ptaligned.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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@ptaligned.com. Also on June 14, 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 11, 2016, 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
Complainant has acquired common law rights in the mark PTALIGNED through its substantially continuous and exclusive use of the mark in U.S. commerce since at least as early as September 1, 2015. Complainant uses its PTALIGNED mark primarily in connection with providing news and information in the field of physical therapy. The services Complainant provides under the mark are targeted to healthcare professionals in this field, and include providing business advice and practice management tips, publishing articles with information on products used for patient treatment, providing medical and scientific research information in field of physical therapy, rehabilitation and sports medicine and providing a website where healthcare professionals can obtain information about these and other topics related to physical therapy.
Complainant provides the services with which it uses its PTALIGNED mark primarily through its website, which includes a section devoted to providing news and information about physical therapy. The PTALIGNED mark is prominently displayed in the upper left corner of each page within this section of Complainant’s website. In addition, the mark is displayed at trade events sponsored and attended by Complainant, as well as on informational materials, both print and electronic, Complainant disseminates to healthcare professionals in the field. Through such use, service providers in the field of physical therapy have come to recognize the PTALIGNED mark as indicating Complainant as the source of the particular informational services with which the mark is used. Accordingly, Complainant has obtained trademark rights in the PTALIGNED mark.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
The domain name ptaligned.com is identical or confusingly similar to Complainant’s PTALIGNED mark.
The domain name at issue, ptaligned.com, is essentially identical to the Complainant’s PTALIGNED mark. The only way in which the domain name differs from Complainant’s PTALIGNED mark is by the addition of the generic top level domain (gTLD) “.com.” It is well settled that “adding a gTLD to a mark does nothing to distinguish it from a complainant’s mark.” Mine O’Mine v. Shimoshita, FA 1383247 (Forum May 20, 2011) (citing Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant)). See also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Accordingly, the domain name is identical or confusingly similar to the Complainant’s PTALIGNED mark.
Respondent has no rights or legitimate interests in the ptaligned.com domain name.
Neither Respondent nor the original registrant of the domain name, Sean Lee, is sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s PTALIGNED mark in a domain name or in any other manner, nor did Complainant give such permission the original registrant. Moreover, to Complainant’s knowledge, neither Respondent nor the original registrant has used the PTALIGNED mark with any bona fide offering of goods or services, and neither is known by the domain name. The ptaligned.com domain name is not currently used with any offering of goods or services. At present, entering the URL ptaligned.com in the address bar of a web browser returns an error message that says the page cannot be displayed or that the site cannot be reached. Previously, when the ptaligned.com domain was registered to Sean Lee, the domain redirected to another domain, yelloent.com, which said “COMING SOON,” and indicated that “any questions” could be emailed to Sean Lee at dragon3217@naver.com.
The ptaligned.com domain name was registered and is being used in bad faith.
Respondent’s predecessor registered and used the domain name ptaligned.com in bad faith, and Respondent obtained the registration and continues to use the domain name ptaligned.com in bad faith. At the very least, Respondent’s predecessor registered the domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name, and Respondent and the original registrant have engaged in a pattern of such conduct. See UDRP ¶4b(ii).
Complainant filed U.S. Trademark Application Serial Number 86/837,248 to register its PTALIGNED mark on December 2, 2015. Complainant believes this application was publicly available no later than December 5, 2015. According to the WhoIs entry for the domain name, the original registrant, Sean Lee, registered the domain name on December 7, 2015, five days after Complainant’s trademark application was filed, and two days after the application became public. On April 28, 2016, the WhoIs information for the domain was updated to indicate Respondent, mau lio, as the domain owner.
The original registrant, Sean Lee, followed the identical pattern with at least four other marks that were the subject of U.S. trademark applications filed the same day as Complainant’s trademark application; i.e. on December 2, 2015. These other marks are:
- 24/7 SPECIALTY PHARMACY, the subject of a U.S. trademark application filed by Hutcheson Homecare Pharmacy, Inc. Respondent’s predecessor registered the corresponding domain name, 247specialtypharmacy.com, on December 7, 2015.
- DCALINK, the subject of two applications filed by Pathology Associates Medical Laboratories, LLC. Respondent’s predecessor registered the corresponding dcalink.com domain name on December 7, 2015.
- STROL RANK, the subject of a U.S. trademark application filed by Strol, LLC. Respondent’s predecessor registered the corresponding domain name, strolrank.com, on December 7, 2015.
- YOUGOV CUBE, the subject of a U.S. trademark application filed by YouGov Plc. Respondent’s predecessor registered the corresponding domain name, yougovcube.com, on December 7, 2015.
As with the ptaligned.com domain, the registrations of the above-mentioned domain names were transferred from Sean Lee to mau lio on April 28, 2016. The error message that is returned when entering these domain names in the address bar of a web browser is the same as the one returned when entering ptaligned.com. As with the ptaligned.com domain name, at least the 247specialitypharmacy.com and dcalink.com domain names redirected to yelloent.com prior to the domain name’s transfer to mau lio.
In addition to the examples given above, set forth below are examples of other marks that have been the subject of a U.S. trademark application and that Respondent’s predecessor registered as a domain name within days of the application’s filing. In each of the cases below, the WhoIs information for the domain was updated on April 28, 2016 to indicate that the domain name had been transferred from the original registrant, Sean Lee, to Respondent. In addition, in each of the cases below, the domain name registered by Respondent’s predecessor previously resolved to yelloent.com, and now returns an error message.
Exhibit Mark Filed Applicant DN Registered by Sean Date
N DEMOLITION 7/22/15 Charles B. Turner demolitiondoobie.com 8/1/15
DOOBIE
O MOCA MINUTE 7/31/15 The American Board of mocaminute.com 8/5/15
Anesthesiology, Inc.
P SQUEEGEE 9/23/15 Wellspring Investment squeegeebreath.com 9/28/15
Network, LLC
Q LAGREE 25 10/6/15 Sebastien Lagree lagree25.com 10/10/15
R BHD 10/30/15 Comm Group, Inc. bhdbeachology.com 11/4/15
BEACHOLOGY
S PASARION 1/20/16 Roche Molecular pasarion.com 1/25/16
Systems, Inc.
T LEGALEARN 1/20/16 Strategic Client legalearn.com 1/25/16
Insights, Inc.
U FROM TIDE TO 3/28/16 Taylor United, Inc. fromtidetotable.com 4/1/16
TABLE
Respondent, mau lio, has engaged in the same pattern of bad faith domain name registration as the original registrant, Sean Lee. Set forth below are some examples of domain names mau lio has registered that correspond to marks in newly filed U.S. trademark applications.
Exhibit Mark Filed Applicant DN Registered by Sean Date
V BLIND DATE 4/27/16 Nils Lofgren blinddatejam.com 5/2/16
JAM
W LITTLE START 4/27/16 Little Star Media Inc. littlestartmedia.com 5/2/16
MEDIA
X RIGHT BRAIN 4/29/16 Rapture World Limited rightbrainsupplychain.com 5/5/16
SUPPLY CHAIN
Y REBELUTION 5/5/16 Rebelution, LLC rebelutionipa.com 5/10/16
IPA
Z XANSTAFF 5/5/16 Xanitos Inc. xanstaff.com 5/10/16
Based on the foregoing, it is clear that Respondent’s predecessor registered the ptaligned.com domain name in order to prevent Complainant from reflecting its PTALIGNED mark in a corresponding domain name. Complainant’s mark, just like the domain name reflecting it registered by Sean Lee, is a coined term. The mark combines two elements, “PT” and “ALIGNED,” that as a whole have meaning only as a mark or source identifier for Complainant’s services. Complainant is not aware of, and does not believe there is, any reason this term would be meaningful to Respondent’s predecessor or to Respondent.
For Complainant and the original registrant to have both coined and sought to register the PTALIGNED term (one as a trademark, the other as a domain name) at almost the same time would have been an incredible coincidence. However, Sean Lee’s pattern of registering domains corresponding to newly-applied for trademarks clearly demonstrates that there was nothing coincidental about the registration of ptaligned.com. Instead, it is evident that Respondent’s predecessor registered the domain name precisely because the domain name corresponds to an applied-for mark owned by a third party, and therefor would be of value if the rights owner is willing to pay a ransom to acquire it.
The original registrant’s registration of the ptaligned.com domain name is part of a pattern by both Respondent and Respondent’s predecessor of registering domain names identical to marks in which third parties have preexisting rights (e.g. reflected in U.S. trademark applications, as in this case), or in which third parties have expressed a genuine interest in obtaining rights by legitimate means (e.g., by filing U.S. intent-to-use based trademark applications). In the examples set forth above, as in this case, the domain names registered by Sean Lee and mau lio do not consist of familiar or common words or terms. They instead consist of coined marks found in U.S. trademark applications that were filed only days before Sean Lee or mau lio registered the same domain name. It is simply impossible for Respondent or Respondent’s predecessor to have registered the identical coined terms as domain names by coincidence, let alone at nearly the same time. Respondent’s conduct and the conduct of the original registrant are clear attempts to exploit the marks and rights of third parties. No other credible scenario can explain the situation. This pattern, of which the domain at issue is a part, clearly demonstrates that the ptaligned.com domain name was registered and is being used in bad faith.
The original registrant’s transfer of the ptaligned.com domain name, as well as the other domain names cited above that correspond to marks in U.S. trademark applications, is further evidence of bad faith. All of the above-identified domains originally registered to Sean Lee use TurnCommerce, Inc., doing business as NameBright.com, as the registrar. One of the services NameBright offers to its domain name registration customers is WhoIs counters. NameBright’s website says, “Every day our NameBright WhoIs counters work to track how many times your domains are being searched. We keep a history of this information so you can keep on top of your domains and understand more about your domain.” On April 25 and 26, 2016, just days before the April 28, 2016 transfer of the ptaligned.com domain name from Sean Lee to mau lio, Complainant accessed the WhoIs information for dozens of domain names registered to Sean Lee to confirm the pattern demonstrated above.
The timing of the transfer of the domain name is hardly coincidental. Rather, it is likely that the transfer was a sham, done in an attempt to frustrate the UDRP process after the original registrant noticed the number of WhoIs searches of his domains through NameBright’s WhoIs counter service. Respondent’s and the original registrant’s attempts to disguise the true identity of the owner of the ptaligned.com domain and to frustrate the UDRP process is additional evidence of their bad faith. See BOSU Fitness, LLC v Kolombo Networks, FA0906001266587 (Forum July 22, 2009)(finding that switching WHOIS information in anticipation of a UDRP complaint “constitutes ‘cyberflying’ and is further evidence of bad faith registration and use under Policy ¶4(a)(iii).”); Universal Protein Supplements Corporation v. Privacy Protect.org/Domain Admin/ID#10760, FA1208001458550 (Forum September 17, 2012)(cyberflight creates a presumption of bad faith registration and use).
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 been registered and is 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(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.”).
Complainant uses the PTALIGNED mark in connection with its business of providing informational materials regarding chiropractic medicine. While not recited in the Complaint, Complainant’s mark was registered with the United States Patent and Trademark Office (“USPTO”) on July 19, 2016 with registration #5002786. The date of first use is September 1, 2015, with the application for registration filed with the USPTO on December 5, 2015. Registration of a mark with the USPTO (or any other similar governmental authority) is sufficient evidence of a complainant’s rights in a mark even though the parties may be from different countries (as they are in this case). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant does not need to prove it has superior rights to Respondent at this stage of the proceedings, just that Complainant has some rights. Complainant has adequately established its rights in the mark under Policy ¶ 4(a)(i).
Complainant claims the <ptaligned.com> domain name is identical to the PTALIGNED mark because it fully incorporates Complainant’s mark with the addition of the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires a TLD. Respondent’s disputed domain name is confusingly similar to Complainant’s PTALIGNED mark under Policy ¶ 4(a)(i) because it is identical to Complainant’s mark.
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 (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.”).
Complainant claims Respondent has no rights or legitimate interests in the <ptaligned.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information for disputed domain name lists “mau lio” as registrant of record. There is no obvious connection between the registrant’s name and the disputed domain name. Respondent has failed to submit a response in this proceeding. Therefore, there is no factual basis to find Respondent commonly known by the disputed domain name under Policy ¶4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). Respondent is not affiliated with Complainant in any way. Complainant has not granted Respondent authorization to use the PTALIGNED mark. In short, there is no basis to find Respondent has rights or legitimate interests in the <ptaligned.com> domain name because Respondent is commonly known by the disputed domain name.
Complainant claims Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <ptaligned.com> domain name. Just before this Proceeding started, the domain name resolved to an inactive website displaying an error message stating “COMING SOON.” Now the domain name does not even do that. Inactive use of a disputed domain name constitutes neither (i) a bona fide offering of goods or services, nor (ii) 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)). Respondent’s use of the <ptaligned.com> domain name constitutes neither (i) a bona fide offering of goods or services, nor (ii) a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad faith registration and use. Sean Lee (the original registrant of the domain) registered the domain just days after Complainant filed a trademark application with the USPTO on December 5, 2015. Sean Lee later transferred the domain to Respondent on April 28, 2016. Respondent has engaged in a pattern of bad faith registration and use because the domain registration by Sean Lee and subsequent transfer of the domain to Respondent has been repeated with other marks. In short, it constitutes a pattern or practice. 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).”). Respondent’s modus operandi and intention are clear enough from the research undertaken on behalf of Complainant. Respondent appears to register newly issued marks as domain names and then transfers them to third parties. This type of modus operandi constitutes bad faith under Policy ¶4(b)(ii). See, e.g., WBC Group, LLC v. lupie jet, FA 1678468 (Forum July 8, 2016). Therefore, Respondent’s behavior demonstrates bad faith under Policy ¶ 4(a)(iii) even though this proceeding includes just one domain.
Complainant claims Respondent’s registration and use was opportunistic based on the timing of the domain’s registration. Respondent is engaged in a coordinated scheme with the original registrant, Sean Lee. She registered the domain name five days after Complainant’s trademark application was filed, and two days after the application became public. The domain name was transferred to Respondent on April 28, 2016. A respondent has acted opportunistically and in bad faith when the registration of the disputed domain name is sufficiently close to a complainant’s trademark application filing date. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).
In its Policy ¶ 4(a)(ii) argument, Complainant claimed Respondent’s domain resolves to an inactive website. Panels have generally determined 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). Respondent registered and is using the domain in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ptaligned.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 21, 2016
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