Tealium, Inc. v. Ke Gao / Gaoke
Claim Number: FA1901001827781
Complainant is Tealium, Inc. (“Complainant”), represented by John Paul Oleksiuk of Cooley LLP, California, USA. Respondent is ke gao / gaoke (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tealiumu.com> (“Domain Name”), registered with Jiangsu Bangning Science & technology 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2019; the Forum received payment on February 21, 2019. The Complaint was received in both Chinese and English.
On February 25, 2019, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to the Forum that the <tealiumu.com> domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & technology 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 February 28, 2019, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 20, 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@tealiumu.com. Also on February 28, 2019, 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 March 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Preliminary Issue: Language of Proceeding
The language of the Registration Agreement in this case is Chinese. The Complaint has been provided in English and Chinese.
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 demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. 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 may weigh 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.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
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 as to continue this proceeding in English would not materially result in prejudice to Respondent. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010).
A. Complainant
Complainant is a leading developer of enterprise tag management, customer data platform and data management solutions. Complainant has rights in the TEALIUM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,380,057, registered Aug. 6, 2013). Respondent’s <tealiumu.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the non-distinctive letter “u,” short for the term “university.”
Respondent has no rights or legitimate interests in the <tealiumu.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its TEALIUM mark or any variant. Respondent also does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to host a webpage that mimics the webpage of an unrelated (to either party) Chinese fertilizer company (the “Third Party”), and to display links which redirect users to unrelated pay-per-click services.
Respondent registered and uses the <tealiumu.com> domain name in bad faith. Respondent uses the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its webpage by creating a likelihood of confusion with the TEALIUM mark as to source, sponsorship, or affiliation of Respondent’s website. The Domain Name resolves to a webpage that mimics the legitimate webpage of the Third Party, and contains various links to redirect the user to a website that offers gambling and other services. Further, Respondent likely registered the Domain Name with knowledge of Complainant’s rights in the mark given the unique qualities of the TEALIUM mark, which was adopted well prior to Respondent registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TEALIUM mark. The Domain Name is confusingly similar to Complainant’s TEALIUM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the 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 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).
Complainant has rights in the TEALIUM mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,380,057, registered Aug. 6, 2013). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <tealiumu.com> Domain Name is confusingly similar to the TEALIUM mark as it fully incorporates the TEALIUM mark adding only the non-distinctive letter “u”. The addition of a single letter and the “.com” generic top-level domain (“gTLD”) are not sufficient to distinguish a the Domain Name from an the TEALIUM mark in a Policy ¶ 4(a)(i) analysis. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the TEALIUM mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “ke gao / gaoke” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the Domain Name to host an unrelated website (“Respondent’s Website”) that mimics the legitimate website of the third party and displays links that redirect users to gambling services and gambling advertisements, for which the Respondent may receive revenue; in essence the Respondent’s Website is a pay-per-click page that operates to mimic a legitimate website. Such a use does not amount to a bona fide offering of goods or services nor a legitimate non-commercial or fair use. See CDW LLC v. Spencer Askew, 1806931 (Forum Oct. 22, 2018) (“Respondent employs the <cdw-logistics.com> domain name to profit by diverting internet users to a parked webpage that contains [unrelated] pay-per-click hyperlinks. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The Panel notes that the provisions of Policy ¶¶ 4(b)(i)-(iv) are intended to be an illustrative list of bad faith circumstances rather than an exhaustive one. See Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Respondent has used the Domain Name to host a website that mimics or clones the website of the Third Party, including reproducing the Third Party’s copyrighted material and contact details. However instead of the links on the Respondent’s Website linking to the Third Party’s products, they instead link to pages that feature gambling advertisements on a pay-per-click basis. The Panel finds that this conduct amounts to bad faith registration and use under both Policy ¶ 4(b)(iii) and more generally under the Policy. Given that Respondent is using the Domain Name to pass itself off as the Third Party in a misleading manner, for its own commercial gain, it is difficult to identify a basis to conclude (and the Respondent fails to provide one) that the Domain Name was registered and used for any good faith reason.
Furthermore, when considering Policy ¶ 4(b)(iii), the Panel notes that Policy ¶ 4(b)(iii) does not require Respondent be a competitor of Complainant, merely that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor [emphasis added]. Section 3.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) notes that that when considering Policy ¶ 4(b)(iii) “Panels have applied the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise..” In the present case Respondent is using the Domain Name as part of a scheme to divert Internet users to its site where it passes itself off as the Third Party for commercial gain. Use of a domain name to divert Internet users generally disrupts a competitor’s business, thereby evincing bad faith under Policy ¶ 4(b)(iii). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Complainant alleges that Respondent is using the disputed domain name to divert Internet users to Respondent’s website, which features content that is identical to Complainant’s own website. The Panel finds that Respondent is disrupting Complainant’s business and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).”).
As such, it is not necessary for the Panel to reach a conclusion as to whether Respondent was aware of Complainant or the TEALIUM mark at the time of registration, or has used the Domain Name with Complainant in mind. The Policy does not always require a panel to reach such a conclusion; see Virgin Enterprises Limited v. Jay Cannon, D2016-0452. (WIPO Apr. 11, 2016). Rather the Panel finds that the evidence of Respondent’s use of the Domain Name supports a finding of bad faith registration and use on the basis that Respondent has registered and is using the Domain Name in order to disrupt the business the Third Party, a competitor and that is sufficient for a finding of bad faith.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith, both within the meaning of Policy ¶ 4(a)(iii) and more generally.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tealiumu.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: March 23, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page