eNom, Incorporated v. wan yuanhu
Claim Number: FA1309001519227
Complainant is eNom, Incorporated (“Complainant”), represented by Richard R. Danis of eNom, Incorporated, Washington, USA. Respondent is wan yuanhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enomreseller.org>, registered with GoDaddy.com, LLC.
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 September 12, 2013; the National Arbitration Forum received payment on September 12, 2013.
On September 12, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enomreseller.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@enomreseller.org. Also on September 16, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
An untimely communication was received from Respondent simply stating that he has used the disputed domain for four years and does not want to give it up. As this submission was both untimely and lacking in substantive value, it is not considered herein.
On October 19, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
a) Complainant has rights in the ENOM mark, which has been in used in connection with domain name registrar and web hosting services, including registration, transfer, and account management since 1997. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the ENOM mark (Reg. No. 2,728,146 registered June 17, 2003).
b) The <enomreseller.org> domain name is confusingly similar to the ENOM mark. The disputed domain name consists of the ENOM mark and the generic term “reseller”.
c) Complainant has not granted Respondent a license or any other authorization to use the ENOM mark.
d) Respondent maintains the <enomreseller.org> domain name for use in connection with reselling “domain name and [I]nternet services.” Thus, Respondent uses the <enomreseller.org> domain name in connection with services that directly compete with Complainant’s services.
e) The <enomreseller.org> domain name is disruptive to Complainant’s business. The disputed domain name sells competing services. Respondent’s registration and use of the <enomreseller.org> domain name creates the erroneous impression that the disputed domain name is operated by or otherwise associated with or sponsored by Complainant, causing irreparable damage to Complainant.
f) Respondent makes unauthorized use of Complainants ENOM mark in a manner that is likely to confuse consumers into falsely believing that Respondent is affiliated with, connected to, or sponsored by Complainant. Respondent’s registration and use of the <enomreseller.org> domain name creates the erroneous impression that the disputed domain name is operated by or otherwise associated with or sponsored by Complainant. Respondent is attempting to capitalize on the fame and goodwill associated with the ENOM mark.
g) Respondent attempts to pass off the <enomreseller.org> domain name as being affiliated with Complainant. Respondent makes use of the distinctive ENOM logo on the websites to which the <enomreseller.org> domain name resolves.
h) Respondent clearly knew of Complainant’s business and its exclusive rights in the ENOM mark at the time Respondent registered the <enomreseller.org> domain name, as evidenced by the fact that the <enomreseller.org> domain name is a confusingly similar domain name, used the ENOM mark in the resolving website and offers.
B. Respondent
The Panel notes that Respondent registered the <enomreseller.org> domain name on April 17, 2010.
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 asserts that it has rights in the ENOM mark, which has been in use in connection with domain name registrar and web hosting services, including registration, transfer, and account management since 1997. Complainant provides evidence that it is the owner of the USPTO registration for the ENOM mark (Reg. No. 2,728,146 registered June 17, 2003). Panels have found that registration of a mark is evidence of having rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel notes that the available information for Respondent lists an address of “Wuhan, Wuhan, Hubei 430074, US.” The Panel notes that “Wuhan, Hubei” is a location in China rather than in the USA. However, the Panel notes previous decisions where panels have found that the rights in a mark established by trademark registration are not diminished by the location of a party outside of the jurisdiction where the mark was registered. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel finds that, regardless of where Respondent actually resides, Complainant has rights in the ENOM mark that satisfy Policy ¶ 4(a)(i).
Complainant claims that the <enomreseller.org> domain name is confusingly similar to the ENOM mark. Complainant notes that the disputed domain name consists of the ENOM mark and the generic term “reseller”. The addition of this generic term to the domain name fails to create a meaningful distinction from the infringed-upon mark, as the mark remains the dominant portion of the domain name. Therefore, the Panel finds that the <enomreseller.org> domain name is confusingly similar to the ENOM mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that it has not granted Respondent a license or any other authorization to use the ENOM mark. The Panel notes that the WHOIS record for the <enomreseller.org> domain name lists “wan yuanhu” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. This Panel similarly concludes that Respondent is not commonly known by the <enomreseller.org> domain name under Policy ¶ 4(c)(ii).
Complainant also alleges that Respondent maintains the <enomreseller.org> domain name for use in connection with the resale of “domain name and [I]nternet services.” Thus, Complainant notes, Respondent uses the <enomreseller.org> domain name in connection with services that directly compete with Complainant’s services. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), held that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name. Accordingly, the Panel holds that Respondent’s use of the <enomreseller.org> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using the <enomreseller.org> domain name in bad faith. According to Complainant, the <enomreseller.org> domain name is disruptive to Complainant’s business, as it resolves to a website where Respondent sells competing services. Complainant argues that Respondent’s registration and use of the <enomreseller.org> domain name creates the erroneous impression that the disputed domain name is operated by or otherwise associated with or sponsored by Complainant, causing irreparable damage to Complainant. Panels have found that the appropriation of a mark in order to divert consumers away from the Complainant is evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that the registration and use of the <enomreseller.org> domain name is disruptive and thus a result of bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent makes an unauthorized use of Complainant’s ENOM mark in a manner that is likely to confuse consumers into falsely believing that Respondent is affiliated with, connected to, or sponsored by Complainant. According to Complainant, Respondent’s registration and use of the <enomreseller.org> domain name creates the erroneous impression that the disputed domain name is operated by or otherwise associated with or sponsored by Complainant, and Respondent is attempting to capitalize on the fame and goodwill associated with the ENOM mark. Therefore, the Panel also finds that Respondent’s commercial gain from the sale of competing services at the <enomreseller.org> domain name demonstrates bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent attempts to pass off the <enomreseller.org> domain name as affiliated with Complainant. Complainant notes that Respondent makes use of the distinctive ENOM logo on the websites to which the <enomreseller.org> domain name resolves, and that Respondent offers services in direct competition with those that Complainant markets. Previous panels have held that the use of the mark of a complainant to give the impression that the disputed domain name is affiliated with the complainant is evidence of bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website). Therefore, the Panel finds that Respondent registered and is using the <enomreseller.org> domain name in bad faith under Policy ¶ 4(a)(iii) on this ground as well.
Complainant further alleges that Respondent clearly knew of Complainant’s business and exclusive rights in the ENOM mark at the time Respondent registered the <enomreseller.org> domain name, as evidenced by the fact that the <enomreseller.org> domain name is a confusingly similar domain name and that the resolving website uses the ENOM mark and offers competing services. The Panel agrees, and finds that Respondent had actual knowledge of Complainant's mark and rights and that Respondent therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 <enomreseller.org> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 28, 2013
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