Meguiar’s, Inc. v. Xie Zheng Yu
Claim Number: FA1704001725057
Complainant is Meguiar’s, Inc. (“Complainant”), represented by Andrea Shannon of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Xie Zheng Yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <meguiars.shop>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 April 3, 2017; the Forum received payment on April 3, 2017. The Complaint was received in English.
On April 5, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <meguiars.shop> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 April 12, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 2, 2017 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@meguiars.shop. Also on April 12, 2017, 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 May 5, 2017, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Meguiar’s Inc., is a global car cleaning products company based in South Irvine, California. In connection with this business, Complainant uses the MEGUIAR’S mark to promote its goods and services. Complainant has rights in the mark through its registration with multiple trademark authorities including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,885,764, registered Mar. 28, 1995). Respondent’s domain name, <meguiars.shop>, is identical to Complainant’s mark as it contains the mark in its entirety and appends the generic top-level domain (“gTLD”) “.shop” to the end.
ii) Respondent lacks rights and legitimate interests in the <meguiars.shop> domain name. Respondent is not commonly known by the domain name, nor has Respondent used the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, <meguiars.shop> resolves to a page displaying “unknown host” and has been inactively held since Respondent acquired the page.
iii) Respondent registered and used <meguiars.shop> in bad faith as Respondent had actual knowledge of Complainant’s MEGUIAR’S mark prior to registration and continued to register an identical domain name. Respondent’s bad faith is also evident in its failure to make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <meguiars.shop> was registered on January 14, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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."
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. The Panel has discretion to determine the appropriate language of the proceedings on appointment. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. Complainant respectfully requests that the proceedings be conducted in English. In accordance with the Rules, paragraphs 11(a), 10(b) and 10(c), Complainant requests that the Panel determine English to be the language of the proceeding for the following reasons: (a) the domain name meguiars.shop is in English; and (b) allowing the proceeding to be in Chinese may result in delay, and considerable and unnecessary expense of translating documents.
In the absence of Response and Respondent's no objection to the Complainant's request for the language of the proceedings, the Panel decides English to be the language of the proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
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 asserts rights in the MEGUIAR’S mark through its registration with multiple trademark authorities including the USPTO (e.g., Reg. No. 1,885,764, registered Mar. 28, 1995). Registration with multiple trademark authorities including the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.); see also Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant has rights in the MEGUIAR’S mark per Policy ¶ 4(a)(i).
Complainant contends that Respondent’s domain name, <meguiars.shop>, is identical to Complainant’s mark as it contains the mark in its entirety and appends the generic top-level domain (“gTLD”) “.shop” to the end. The removal of an apostrophe and the addition of a gTLD do not sufficiently differentiate a mark from a disputed domain name. See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). The Panel therefore finds Respondent’s domain name is identical to Complainant’s mark per 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 asserts Respondent is not commonly known by the <meguiars.shop> domain name. Absent a response, WHOIS information can substantiate a finding that a respondent has not been commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum Jul. 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record names the registrant as “Xie Zheng Yu.” As such, the Panel finds that Respondent has not been commonly known by the <meguiars.shop> domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent failed to use <meguiars.shop> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, <meguiars.shop> resolves to a page displaying “unknown host” and has been inactively held since Respondent acquired the disputed domain name. Inactive holding of a domain can support a finding that a respondent lacks rights and legitimate interests in a disputed domain name per Policy ¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds Respondent failed to use <meguiars.shop> in connection with a bona fide offering or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii) and thus lacks rights and legitimate interests in the disputed domain name.
Complainant argues Respondent’s bad faith use is evident in its failure to make an active use of the disputed domain name. Failure to make an active use of a disputed domain name can evince a finding of bad faith use per Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel notes that the disputed domain name resolves only to an error page.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) The MEGUIAR’S Mark has been used in commerce in connection with car care cleaning products since at least as early as the 1960s. Over the years, Complainant has prominently used and promoted the MEGUIAR’S Mark in advertising, sales, and various other ways. As a result, the MEGUIAR’S Mark serves to identify and indicate the source of Complainant’s goods to the consuming public, and to distinguish its goods from those of others. As a result of Complainant’s long usage and promotion of the MEGUIAR’S Mark, it has become well-known to and widely recognized by consumers; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant additionally contends Respondent registered <meguiars.shop> in bad faith as Respondent had actual knowledge of Complainant’s MEGUIAR’S mark prior to registration and continued to register an identical domain name. Knowledge of a complainant’s rights in a mark prior to registration of a domain name containing that mark illustrates a respondent’s bad faith registration per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel infers due to the fame of the Complainant's mark that Respondent had actual knowledge of Complainant’s MEGUIAR’S mark prior to registration. The Panel concludes that Respondent registered and used <meguiars.shop> in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <meguiars.shop> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 12, 2017
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