U.S. Green Building Council v. zhanghui
Claim Number: FA1812001822273
Complainant is U.S. Green Building Council (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is zhanghui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usgbc-uscaribbean.org>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2018; the Forum received payment on December 21, 2018.
On December 24, 2018, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <usgbc-uscaribbean.org> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 December 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2019 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@usgbc-uscaribbean.org. Also on December 28, 2018, 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 January 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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.
The Panel notes that the Registration Agreement for the disputed domain name is written in the Chinese language, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Complainant’s submission of a Chinese language Complaint and Commencement Notification to the Respondent. However, as there is no Response or other submission from the Respondent in this case, the Panel determines that the remainder of the proceedings may be conducted in the English language. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010) (“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.”).
A. Complainant
Founded in 1993, Complainant is a membership-based, nonprofit organization that promotes sustainable, “green” building all around the world through its famous LEED certification program. Complainant has rights in the trademark USGBC through its registrations of such mark with the United States Patent and Trademark Office (“USPTO”), the China Patent and Trademark Office (“CTPO”), and other trademark offices around the world. Such registrations date back to 2003. Both Complainant and its regional affiliates own various domain names that combine the USGBC mark with a geographic descriptor (e.g., <usgbctn.org> for the U.S. state of Tennessee, <usgbcsc.org> for South Carolina, etc.) Respondent’s <usgbc-uscaribbean.org> domain name, created on December 2, 2018, is confusingly similar to Complainant’s USGBC mark as it copies the entirety of the mark and merely adds the geographic descriptors “us” and “caribbean,” a hyphen, and the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <usgbc-uscaribbean.org> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s USGBC mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to host a series of webpages featuring pornographic material.
Respondent registered and uses the <usgbc-uscaribbean.org> domain name in bad faith. Respondent’s disputed domain name resolves to a website that features pornographic content. Further, given the uniqueness and reputation of the USGBC mark, Respondent must have had actual knowledge of Complainants’ rights in the mark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 claims rights in the USGBC mark based upon registration of the mark with the USPTO, the CTPO, and various other trademark authorities around the world. Registration of a mark with multiple trademark offices, including the USPTO, is sufficient to establish rights in that mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel therefore finds that Complainant’s registration of the USGBC mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <usgbc-uscaribbean.org> domain name is confusingly similar to the USGBC mark as the domain incorporates the mark in its entirety and adds the geographic indicators “us” and “caribbean,” a hyphen, and a “.org” gTLD. Such differences are not sufficient to distinguish a domain name from a trademark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel therefore determines that the <usgbc-uscaribbean.org> domain name is confusingly similar to the USGBC 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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <usgbc-uscaribbean.org> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the USGBC mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <usgbc-uscaribbean.org> domain name identifies the registrant as “zhanghui,” and no information in the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <usgbc-uscaribbean.org> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <usgbc-uscaribbean.org> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends the disputed domain name resolves to a website that features pornographic content. Use of a disputed domain name to feature adult sexual content is not, under most circumstances, indicative of any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA1730673 (Forum June 1, 2017) (holding that “Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent uses the domain name to host a pornographic website.”). Complainant provides a screenshot of the disputed domain name’s resolving website which shows an error message that categorizes the website as “pornography.” Further, the Panel’s independent investigation into the disputed domain name at the Wayback Machine (www.Archive.org) reveals an image of the Respondent’s website that post-dates its creation of the domain name and supports the Complainant’s assertion of adult sexual website content. Therefore, under the present circumstances where the disputed domain does not lend itself to any legitimate or fair use in relation to adult sexual content, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that in light of the uniqueness and notoriety of its USGBC mark, it is inconceivable that Respondent could have registered the <usgbc-uscaribbean.org> domain name without actual knowledge of Complainant's rights in the mark. A Respondent’s actual knowledge of a Complainant's rights in an asserted trademark prior to registering the disputed domain name may form the foundation for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s rights in the USGBC based upon the fact that the mark is rather unique, is a coined term with no generic meaning, and the combination of the mark with a geographic descriptor follows the pattern used by the Complainant in creating its own domain names that use the mark.
Next, Complainant contends that Respondent’s bad faith registration and use of the <usgbc-uscaribbean.org> domain name is demonstrated by its use of the domain to resolve to a website featuring pornographic content. Use of a disputed domain name to feature adult oriented sexual content may indicate bad faith under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The Panel notes that Complainant provides a screenshot of what appears to be a web browsing filter message that categorizes the <usgbc-uscaribbean.org> website as “pornography”. The Panel’s own independent investigation of the disputed domain name at the Wayback Machine website (www.Archive.org) supports this assertion. It is also reasonable to conclude, in the absence of any Response or other submission by the Respondent, that the goal of the disputed domain name is to divert users to this adult-themed site for the purposes of commercial gain based upon a likelihood of confusion with the USGBC mark. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv) and thus per ¶ 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 <usgbc-uscaribbean.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 21, 2019
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