Mostchoice.com Inc. v. Xianqing Zhu c/o
Most choice.com, Inc.
Claim Number: FA0502000424540
Complainant is Mostchoice.com, Inc. (“Complainant”),
represented by Ryan L. Isenberg, of Isenberg & Hewitt P.C., 7000
Peachtree Dunwoody Road, Building 15, Suite 100, Atlanta, GA 30328. Respondent
is Xianqing Zhu c/o Most choice.com, Inc. (“Respondent”),
5600 Roswell Road, Ste N275, Atlanta, GA 30342.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <most-choice.com>,
registered with Enom, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 25, 2005.
On
February 18, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <most-choice.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
March 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 22,
2005 by which Respondent could file a response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@most‑choice.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 28, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration 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.”
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration 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 makes the following assertions:
1. Respondent’s <most-choice.com> domain name is identical to Complainant’s
MOSTCHOICE.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <most-choice.com>
domain name.
3. Respondent registered and used the <most-choice.com> domain name in
bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant uses
the MOSTCHOICE.COM mark in connection with providing consumer information about
insurance, financial, and consulting services. Complainant holds two trademark
registrations on the Principal Register of the United States Patent and
Trademark Office that incorporate the MOSTCHOICE mark, including Reg. No.
2,526,944 for MOSTCHOICE.COM (issued January 8, 2002). Complainant also
operates a website at the <mostchoice.com> domain name.
Respondent
registered the <most-choice.com>
domain name on February 2, 2005. The domain name resolves to a website that
includes a copy of the content on Complainant’s website. The website offers
information services that directly compete with Complainant’s services. The
disputed domain name’s WHOIS address information is identical to the WHOIS
address information for Complainant’s domain name.
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.”
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established that it has rights in the MOSTCHOICE.COM mark through registration
with the United States Patent and Trademark Office and through continuous use
of the mark in commerce. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (stating that panel decisions
have held that registration of a mark is prima facie evidence of validity,
which creates a rebuttable presumption that the mark is inherently distinctive
and finding that a respondent has the burden of refuting this assumption).
The <most-choice.com> domain name is
identical to Complainant’s MOSTCHOICE.COM mark because it merely adds a hyphen
to the mark. The addition of a hyphen does not distinguish the disputed domain
name from Complainant’s mark. Thus, the domain name is identical to the mark
under Policy ¶ 4(a)(i). See Chernow
Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“The use
or absence of punctuation marks, such as hyphens, does not alter the fact that
a name is identical to a mark.”); see
also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (“[The]
addition of a hyphen to the registered mark is an insubstantial change. Both
the mark and the domain name would be pronounced in the identical fashion, by
eliminating the hyphen.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant alleges that
Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant’s submission has gone unopposed and its arguments unrefuted.
Because Respondent has failed to submit a response, it has failed to propose
any set of circumstances that could substantiate its rights or legitimate
interests in the <most-choice.com>
domain name under Policy ¶ 4(a)(ii). See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of a complaint to
be deemed true); see also Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not
submitting a response, the respondent failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii) because Respondent is using the disputed domain name to redirect
unsuspecting Internet users to a website that provides services that are in
competition with Complainant’s information services. The Panel infers that
Respondent commercially benefits from this diversion. Respondent makes opportunistic
use of Complainant’s mark in order to capitalize on the goodwill associated
with the MOSTCHOICE.COM mark. Thus, Respondent fails to establish rights or
legitimate interests in the domain name. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where the respondent generated
commercial gain by intentionally and misleadingly diverting users away from the
complainant’s site to a competing website); see
also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would
be unconscionable to find a bona fide offering of services in a respondent’s
operation of [a] website using a domain name which is confusingly similar to
the Complainant’s mark and for the same business.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum
May 30, 2003) (finding that, as the respondent attempted to pass itself off as
the complainant online, through wholesale copying of the complainant’s website,
the respondent had no rights or legitimate interests in the disputed domain
name).
Respondent’s
WHOIS information indicates that the registrant of the disputed domain name is
known as “Xianqing Zhu c/o Most choice.com, Inc.” However, no evidence before
the Panel suggests that Respondent was commonly known by the <most-choice.com> domain name
prior to registration of the disputed domain name. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. Thus, the
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) “to require a showing that one has been commonly known by the domain
name prior to registration of the domain name to prevail”); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent did not have rights in a
domain name when the respondent was not known by the mark); see also Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003)
(finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”); see also Neiman Marcus Group, Inc. v. Neiman-Marcus,
FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has
established itself as the sole holder of all rights and legitimate interests in
the NEIMAN MARCUS mark,” in holding that the respondent was not commonly known
by the <neiman-marcus.net> name,
despite naming itself “Neiman-Marcus” in its WHOIS contact information).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using an identical variation of Complainant’s MOSTCHOICE.COM mark within the
<most-choice.com> domain name
to ensnare unsuspecting Internet users. Respondent then redirects the users to
its commercial website. The Panel infers that Respondent profits from this
diversion. Such infringement is what the Policy was intended to remedy and is
evidence that Respondent registered and used the domain name in bad faith under
Policy ¶ 4(b)(iv). See G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent used the confusingly
similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that, if a respondent profits from its
diversionary use of a complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to a website that offers
services that directly compete with Complainant’s consumer information
services. Respondent’s use of the <most-choice.com>
domain name establishes that Respondent registered the domain name for the
purpose of disrupting the business of a competitor, which evidences bad faith
registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding that the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where the respondent’s sites pass users through to the respondent’s competing
business); see also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business
from the complainant to a competitor’s website in violation of Policy ¶
4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that, in determining if a domain name has been
registered in bad faith, a panel must look at the “totality of circumstances”);
see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
The <most-choice.com> domain name
resolves to a website that contains a copy of the content on Complainant’s
website. Respondent also copied Complainant’s WHOIS contact information when it
registered the disputed domain name. Moreover, because the website purports to
provide consumer information services, the Panel finds that Respondent has
deliberately attempted to pass itself off as Complainant for commercial gain.
Passing off is strong evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed
domain name was registered and used in bad faith where Respondent hosted a
website that “duplicated Complainant’s mark and logo, giving every appearance
of being associated or affiliated with Complainant’s business . . . . In a
nutshell, Respondent used the disputed domain name to perpetrate a fraud.”); see also Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent’s use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
registered mark and simply adds a hyphen, suggests that Respondent knew of
Complainant’s rights in the MOSTCHOICE.COM mark. Additionally, Complainant’s trademark
registration, on file at the United States Patent and Trademark Office, gave
Respondent constructive notice of Complainant’s mark. Moreover, Respondent’s
knowledge of Complainant’s rights in the mark is evidenced by the fact that its
website competes with Complainant and uses Complainant’s website’s content.
Thus, the Panel finds that Respondent chose the <most-choice.com> domain name based on the distinctive and
well-known qualities of Complainant’s mark, which evidences bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding
that, because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about Complainant’s
mark when it registered the subject domain name”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb.
Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <most-choice.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 11, 2005
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