JBG/Lionhead, L.L.C. v. Shen Zhong Chao
Claim Number: FA1607001682938
Complainant is JBG/Lionhead, L.L.C. (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Shen Zhong Chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jbgrealtytrust.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically July 8, 2016; the Forum received payment July 11, 2016. The Forum received the Complaint in both Chinese and English.
On July 11, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <jbgrealtytrust.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited verified that Respondent is bound by the HiChina Zhicheng Technology Limited registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 14, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 3, 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@jbgrealtytrust.com. Also on July 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 August 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant, JBG/ Lionhead, L.L.C., through its affiliates, is an inventor, owner, developer, and manager of real estate properties in the Washington D.C. area. Complainant uses the JBG mark and registered it with the United States Patent and Trademark Office (“USPTO”) to further its business interests (Reg. No. 1,523,773, registered Feb. 7, 1989). Respondent’s domain, <jbgrealtytrust.com>, is confusingly similar to the JBG mark as the domain includes Complainant’s entire mark in the dominant portion of the domain and merely adds the generic wording, “realty trust” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant notes that Respondent is not a licensee or partner of Complainant, is not authorized to use Complainant’s marks, and is not commonly known or identified by the disputed domain name. Respondent’s use of the domain falsely suggests a relationship with Complainant that does not exist and it seeks to divert Internet users to its own website. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered and is using the disputed domain in bad faith. Respondent registered the disputed domain within 24 hours after Complainant made a press release announcing a real estate investment trust called “JBG Realty Trust,” which shows Respondent’s intent to confuse and attract users for its own profit. Respondent’s use of the well-known JBG mark, which has no connection with Respondent, evidences Respondent’s bad faith.
Respondent’s Contentions in this Proceeding:
Respondent did not file a Response in this proceeding. The Panel notes that Respondent created the disputed domain name May 26, 2016.
Language of the Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceeding Chinese. However, the Panel finds that pursuant to the applicable rules on language of proceedings under the UDRP that:
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.
FINDINGS:
Complainant established that it has both rights and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain
name.
Respondent registered a disputed domain name that features Complainant’s mark in its entirety and is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant claims that its rights in the JBG mark stem from registration of the mark with the USPTO (Reg. No. 1,523,773, registered Feb. 7, 1989). See Compl., at Attached Annex 5. Registration of a mark with the USPTO demonstrates rights in a mark pursuant to the Policy. See AOL LLC v. Interrante, FA 681239 (Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant next claims that Respondent’s <jbgrealtytrust.com> domain is confusingly similar to the JBG mark. The domain appears to include the JBG mark in the dominant portion of the domain along with additions of generic terms, “realty,” and “trust,” and the gTLD “.com.” Adding generic terms to a disputed domain does not distinguish a disputed domain name; the domain remains confusingly similar with Complainant’s protected mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Addition of the gTLD “.com,” is irrelevant to an analysis of confusing similarity. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel finds Respondent’s <jbgrealtytrust.com> is confusingly similar to Complainant’s protected mark pursuant to a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent is not a licensee or partner of Complainant, is not authorized to use Complainant’s marks, and is not commonly known or identified by the disputed domain name. WHOIS information associated with the domain identifies Respondent as: “Shen Zhong Chao,” which does not appear to resemble the disputed domain name. Panels have held that finding that a respondent is not commonly known by a disputed domain name may be based on a lack of authorization from a complainant, WHOIS information, and a lack of evidence to the contrary. See Braun Corp. v. Loney, FA 699652 (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). The Panel finds therefore that Respondent is not commonly known by the disputed domain name.
Complainant next argues that Respondent’s use of the domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent created the domain to falsely suggest a relationship with Complainant and to divert Internet users to its own website. Suggesting a false relationship, even where Complainant submits no exhibits to support a claimed use, may be taken as true based on complainant’s assertions when respondent does not respond. See Vanguard Group, Inc. v. Collazo, FA 349074 (Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel takes Complainant’s assertions as true and finds that Respondent’s use of the domain containing Complainant’s protected mark is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent’s registration of the disputed domain within 24 hours after Complainant made a press release announcing a real estate investment trust called “JBG Realty Trust,” shows an intent to confuse and attract users for profit. Again, Complainant did not submit evidence of its press release to corroborate this assertion; but where Respondent does not file a Response, the Panel may take the claim as true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel finds that Respondent acted as Complainant claims, which conduct supports findings of registration and use in bad faith.
Complainant next claims that Respondent’s use of the well-known JBG mark, which has no connection with Respondent, evinces Respondent’s bad faith. Panels have found bad faith where it would be impossible for a respondent to make a good faith use of a disputed domain name. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). The Panel finds that Respondent cannot conceivably make a legitimate use of Complainant’s protected mark, which on its face suggests an association only with and rights in Complainant without permission of Complainant, which has not been given and which could have been but was not challenged here by Respondent. Such use also shows Respondent’s actual notice and knowledge of Complainant’s relationship with the mark. The Panel finds the mark within the disputed domain name and Respondents use of it was done with full knowledge of Complainant’s rights and this supports findings of bad faith registration and use.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that requested relief shall be GRANTED.
Accordingly, it is Ordered that the <jbgrealtytrust.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 25, 2016
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