DOMAINTOOLS, LLC and EUROCONVERGENCE SARL v. duanxiangwang
Claim Number: FA1305001500118
Complainant is DOMAINTOOLS, LLC and EUROCONVERGENCE SARL (“Complainant”), represented by Mike Rodenbaugh of Rodenbaugh Law, California, USA. Respondent is duanxiangwang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <doaintools.com>, <doimaintools.com>, <domailtools.com>, <domaintoolls.com>, <domaintoos.com>, <domainttols.com>, <domaiontools.com>, <domaitools.com>, <domanitools.com>, and <domsintools.com>, registered with Ename 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2013; the National Arbitration Forum received in payment on May 16, 2013. The Complaint was received in both Chinese and English.
On May 16, 2013, Ename Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <doaintools.com>, <doimaintools.com>, <domailtools.com>, <domaintoolls.com>, <domaintoos.com>, <domainttols.com>, <domaiontools.com>, <domaitools.com>, <domanitools.com>, and <domsintools.com> domain names are registered with Ename Technology Co., Ltd. and that Respondent is the current registrant of the names. Ename Technology Co., Ltd. has verified that Respondent is bound by the Ename 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 May 21, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 10, 2013 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@doaintools.com, postmaster@doimaintools.com, postmaster@domailtools.com, postmaster@domaintoolls.com, postmaster@domaintoos.com, postmaster@domainttols.com, postmaster@domaiontools.com, postmaster@domaitools.com, postmaster@domanitools.com, postmaster@domsintools.com. Also on May 21, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" 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 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.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. The DOMAINTOOLS trademark is owned by EuroConvergences SARL and has been licensed to DomainTools, LLC. continuously since May 2006.
2. Complainant owns rights in the DOMAINTOOLS mark through its registration with the United States Patent and Trademark Office (“USPTO”).
a. (Reg. No. 4,079,041 registered January 3, 2012)
b. (Reg. No. 4,079,040 registered January 3, 2012)
3. Complainant holds common law trade name and trademark rights in the DOMAINTOOLS mark through exclusive and continuous use since 2006.
4. Respondent’s <domaintoolls.com>, <domanitools.com>,
5. Complainant has not authorized or licensed Respondent to register or use its DOMAINTOOLS mark.
6. Respondent is not commonly known by the disputed domain names.
7. Respondent’s use of the disputed domain names indicates typosquatting.
8. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
9. Respondent uses the disputed domain names to host commercial websites that provide competing links and advertisements to third-party businesses and products.
10. Respondent had notice of Complainant’s registered mark.
11. Respondent has a pattern of cybersquatting.
12. Respondent’s registration of ten domain names all infringing on Complainant’s rights indicates bad faith use and registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes, however, that Respondent registered the disputed domains on the following dates:
a. The <domaintoos.com> domain name on July 1, 2007.
b. The <domanitools.com> domain name on June 15, 2009.
c. The <domailtools.com> domain name on July 18, 2009.
a. The <domaitools.com> domain name on October 30, 2009.
b. The <doaintools.com> domain name on January 20, 2010.
c. The <domsintools.com> domain name on September 1, 2010.
d. The <domainttols.com> domain name on May 25, 2011.
e. The <domaintoolls.com> domain name on June 8, 2011.
f. The <domaiontools.com> and <doimaintools.com> domain names on June 26, 2011.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” There are two Complainants in this matter: DomainTools, LLC and EuroConvergence SARL. EuroConvergence SARL owns the DOMAINTOOLS mark and exclusively licenses use of the mark to DomainTools, LLC. EuroConvergence SARL has licensed DomainTools, LLC to use its DOMAINTOOLS mark since May of 2006.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them both herein as a single entity.
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(e), 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 (Nat. Arb. 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 DOMAINTOOLS mark under Policy ¶ 4(a)(i). Complainant provides the Panel with evidence of its registration with the USPTO for its DOMAINTOOLS mark. (Reg. No. 4,079,041 filed November 8, 2010; registered January 3, 2012) and (Reg. No. 4,079,040 filed November 8, 2010; registered January 3, 2012). Registration with the USPTO is sufficient to indicate that a complainant has rights in a given mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel notes that it is irrelevant whether a complainant has registered the mark in the country where a respondent operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel thus finds that Complainant has rights in the DOMAINTOOLS mark under Policy ¶ 4(a)(i) through its registrations with the USPTO dating back to November 8, 2010, the date on which Complainant filed its trademark applications. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Comlainant further claims that it possesses common law trademark rights in the DOMAINTOOLS mark through exclusive and continuous use. Complainant provides evidence of the success associated with the DOMAINTOOLS mark, including revenue amounts from 2007 for the amount of $4 million. Previous panels have found that a complainant holds common law rights in a given mark if it provides sufficient evidence of sales figures and expenditures. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant has obtained registration for its marks based upon Lanham Act § 2(f) (15 USC 1025(f) (acquired distinctiveness). The U.S. Court of Appeals for the Federal Circuit has held that “Where an applicant seeks registration on the basis of § 2(f), the mark’s descriptiveness is a nonissue, an applicant’s reliance on § 2(f) during prosecution presumes that the mark is descriptive”. The Cold War Museum v. The Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. Cir. 2004). However, the § 2(f) language does not preclude the possibility of registrant showing a date of acquired distinctiveness prior to assertion of its § 2(f) claim, but subsequent to its date of first use in commerce. In the instant proceeding, Complainant has presented uncontroverted evidence of acquired distinctiveness in 2007. The Panel thus finds that Complainant also holds common law rights in the DOMAINTOOLS mark since 2007 pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <doaintools.com>, <doimaintools.com>, <domailtools.com>, <domaintoolls.com>, <domaintoos.com>, <domainttols.com>, <domaiontools.com>, <domaitools.com>, <domanitools.com>, and <domsintools.com> domain names are all confusingly similar to Complainant’s DOMAINTOOLS mark. Complainant argues that the <domaintoolls.com> and <domanitools.com> domain names are confusingly similar to Complainant’s DOMAINTOOLS mark because they incorporate Complainant’s entire mark and differ only by reversing the order of letters or adding an extra letter. Complainant asserts that the<doaintools.com>, <doimaintools.com>, <domailtools.com>, <domaintoos.com>, <domainttols.com>, <domaiontools.com>, <domaitools.com>, and <domsintools.com> domain names are confusingly similar to Complainant’s DOMAINTOOLS mark because they differ only by anticipated typographical errors of Complainant’s mark or include common misspellings of Complainant’s DOMAINTOOLS mark. Previous panels have found that such variations are insufficient to differentiate a disputed domain name from a given mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). The Panel agrees and finds that Respondent’s <doaintools.com>, <doimaintools.com>, <domailtools.com>, <domaintoolls.com>, <domaintoos.com>, <domainttols.com>, <domaiontools.com>, <domaitools.com>, <domanitools.com>, and <domsintools.com> domain names are confusingly similar to Complainant’s DOMAINTOOLS mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by the domain names. Complainant contends that it has not authorized, licensed, or permitted Respondent to register or use the disputed domain names or to use Complainant’s DOMAINTOOLS mark. Previous panels have found that a respondent is not commonly known by a disputed domain name where the complainant has not authorized the respondent to use the given mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000). The Panel therefore finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the <doaintools.com>, <doimaintools.com>, <domailtools.com>, <domaintoolls.com>, <domaintoos.com>, <domainttols.com>, <domaiontools.com>, <domaitools.com>, <domanitools.com>, and <domsintools.com> disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use as required by Policies ¶ ¶ 4(c)(i) and (iii). Complainant claims that Respondent uses the disputed domain names to resolve to websites hosting pages that provide competing links and advertisements for third-party businesses and products. The Panel notes that the disputed domain names resolve to pages featuring links such as, “NEW LAPTOP FROM GOOGLE”, “ANTHROPOLOGIE-APPAREL” and “SEARS TOOLS ONLINE”. Previous panels have found that using a confusingly similar domain name to host a website featuring third-party links and advertisements, and thereby commercially profiting, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services … or a legitimate noncommercial or fair use); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). The Panel therefore finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is typosquatting. Previous panels have found that a respondent engaged in typosquatting behavior when it intentionally misspells a complainant’s registered mark in the formation of a domain name. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). The Panel finds that Respondent has engaged in typosquatting and thus has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and is using the disputed domain names in bad faith as indicated by Respondent’s typosquatting behavior. Previous panels have found that using typosquatted versions of a complainant’s registered mark indicates bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.) Similarly, this Panel finds that Respondent’s typosquatting activity is evidence of both bad faith registration and use.
Thus, Complainant has also satisfied 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 <doaintools.com>, <doimaintools.com>, <domailtools.com>, <domaintoolls.com>, <domaintoos.com>, <domainttols.com>, <domaiontools.com>, <domaitools.com>,
<domanitools.com>, and <domsintools.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 29, 2013
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