Nu Mark LLC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)
Claim Number: FA1609001693450
Complainant is Nu Mark LLC (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, District of Columbia, USA. Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marktenvape.com> and <numarkvape.com>, registered with HiChina Zhicheng Technology Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2016; the Forum received payment on September 12, 2016.
On September 14, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <marktenvape.com> and <numarkvape.com> domain names are registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 September 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@marktenvape.com, postmaster@numarkvape.com. Also on September 20, 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 October 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Nu Mark LLC, is a leading developer of innovative tobacco products including electronic vapor (“e-vapor”) products, batteries, battery chargers, and power adaptors for e-vapor products. Complainant uses the MARKTEN and NU MARK marks in connection with its e-vapor products and has rights in the marks based on registration of the marks with the United States Patent and Trademark Office (“USPTO”) and the China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 4,512,542, registered April 8, 2014 & Reg. No. 12,484,002, registered March 21, 2015, respectively). Respondent’s domain names <marktenvape.com> and <numarkvape.com> are identical or confusingly similar to either Complainant’s MARKTEN or NU MARK marks as the domain names merely add the term “vape” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been commonly known by the disputed domain names or been authorized to use the NU MARK or MARKTEN marks. Respondent’s inactive use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent registered and is using the disputed domain names in bad faith. Respondent is attempting to disrupt the business of Complainant through registration of the disputed domain names and does so in bad faith. Respondent’s inactive use of the disputed domain name demonstrates bad faith.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain names were created on July 14, 2016.
Complainant established that it had rights in the marks contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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."
Preliminary Issue: Supported Language Request
The Panel notes that Complainant makes requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. Complainant claims that Respondent’s registration of the disputed domain names, which incorporate English language marks, demonstrates an ability to understand the English language. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), although the Panel finds that persuasive evidence has not been sufficiently adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language, after considering the circumstance of the present case, to ensure fairness and justice to both parties, the Panel decides that the proceeding should be in English especially in the circumstances that Respondent did not submit any objection to Complainant's language request nor Response to Complaint.
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.”).
Complainant next claims that Respondent’s domain names <marktenvape.com> and <numarkvape.com> are confusingly similar to the MARKTEN and NU MARK marks. Respondent’s domain names both appear to include one of the MARKTEN or NU MARK marks and add the term “vape,” and the gTLD “.com.” Panels have held that adding a generic term to a mark in a domain name may allow for a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also found that the addition of the gTLD “.com” is not relevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel finds that Respondent’s domain names are confusingly similar to the NUMARK and MARKTEN marks for purposes of Policy ¶ 4(a)(i).
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.”).
Complainant claims that Respondent has not been commonly known by the disputed domain names or been authorized to use the NU MARK or MARKTEN marks. WHOIS information associated with the disputed domain names identifies Respondent as “YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service),” which does not appear to resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of other information in the record to the contrary. 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). This Panel concludes that Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next argues that Respondent’s domain names have not been used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain names appear to resolve to websites which are inactive and display the message “This site can’t be reached.” Panels have held that a domain name resolving to an inactive website is not a bona fide offering of goods or services or 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)). This Panel finds that Respondent’s inactive use of the domain names is not a use within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant asserts that Respondent is attempting to disrupt the business of Complainant through registration of the disputed domain names and does so in bad faith. Complainant claims that although Respondent’s domain names are inactive it is evident from the registration of such confusingly similar domain names that Respondent intends to create confusion and thereby disrupt Complainant’s business. Panels have typically found bad faith under Policy ¶ 4(b)(iii) where a business is disrupted through selling competing goods or promoting products of a competitor. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). However, panels have defined the term competition under Policy ¶ 4(b)(iii) broadly. See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”). Given the circumstances that the disputed domain names remain inactive, the Panel cannot accept Complainant's allegations that Respondent’s use of the domain names competes and disrupts Complainant’s business and it finds that Respondent has not shown bad faith under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent’s inactive use of the disputed domain name demonstrates bad faith. As stated previously, Respondent’s domain names appear to resolve to websites that are not actively being used. Panels have found that a respondent used and registered domain names in bad faith where the domain names were inactively used and it would be impossible for the domain names to be used in a manner that did not create confusion. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel finds that Respondent’s inactive use of the domain names demonstrates bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marktenvape.com> and <numarkvape.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 27, 2016
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