Vertu Corporation Limited v. Dai Yong
Claim Number: FA1509001636556
Complainant is Vertu Corporation Limited (“Complainant”), represented by Harpeet Dhaliwal of Stobbs, Endurance House, United Kingdom. Respondent is Dai Yong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vertu.ren>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 Forum electronically on September 4, 2015; the Forum received payment on September 4, 2015.
On September 6, 2015, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <vertu.ren> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2015 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@vertu.ren. Also on September 15, 2015, 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 October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
A. Complainant
Policy ¶ 4(a)(i)
Complainant is is a manufacturer of luxury mobile phones. Complainant has rights in the VERTU mark through its registration with the Office for Harmonization in the Intenral Market (“OHIM”) (Reg. No. 2,486,603, registered on February 27, 2004). Respondent’s <vertu.ren> domain name is identical to the VERTU mark because it contains the entirety of the mark and is altered by only the generic top-level domain (“gTLD”) “.ren.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <vertu.ren> domain name, because it has presented no evidence to suggest such and because Complainant has not authorized it to use the VERTU mark. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the <vertu.ren> domain name to sell counterfeit versions of Complainant’s products through a website designed to copy that of Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <vertu.ren> domain name in bad faith because it uses the resolving website to impersonate Complainant and sell counterfeit versions of Complainant’s good, which is both a disruptive use and an attraction for commercial gain. Respondent registered the <vertu.ren> domain name in bad faith because it had actual knowledge of Complainant’s rights in the VERTU mark, which is evident through Respondent’s use.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <vertu.ren> domain name was created on May 20, 2015.
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.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant alleges it has rights in the VERTU mark through its registration with the OHIM (Reg. No. 002486603, registered on February 27, 2004). Complainant has provided documentation of this registration, along with other international registrations, including registration in China, where Respondent is located.
Past panels have found that registration with the OHIM suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the VERTU mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <vertu.ren> domain name is identical to the VERTU mark because it contains the entirety of the mark and is altered by only the gTLD “.ren.” Past panels have found domains and marks identical when only differentiated by a gTLD. Therefore, the Panel finds that Respondent’s <vertu.ren> domain name is identical to Complainant’s VERTU mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the <vertu.ren> domain name because Complainant has not authorized it to use the VERTU mark. The Panel notes that the WHOIS information lists “Dai Yong” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii) under similar circumstances. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <vertu.ren> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <vertu.ren> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to pass itself off as Complainant in order to sell counterfeit versions of Complainant’s products. Complainant has provided evidence of Respondent’s attempt at passing itself off as Complainant. Past panels have found either attempted passing off, or the sale of counterfeit goods, sufficient to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). The Panel finds Complainant’s evidence sufficient to show that Respondent is attempting to pass itself off as Complainant or to sell counterfeit versions of Complainant’s products. The Panel therefore finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges, and has provided evidence, that Respondent uses the <vertu.ren> domain name for the purpose of disrupting Complainant’s business operations because it uses the resolving website to sell counterfeit versions of Complainant’s products. Past panels have found the sale of counterfeit goods to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith use. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). The Panel similarly finds here that Respondent is using the <vertu.ren> domain name in bad faith under Policy ¶ 4(b)(iii).
In addition to the sale of counterfeit goods, described above, Complainant alleges, and has provided evidence, that Respondent uses its <vertu.ren> domain name in an attempt to pass itself off as Complainant. Past panels have found either use, counterfeit sale or attempted passing off, to constitute bad faith use pursuant to Policy ¶ 4(b)(iv). 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 the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). The Panel finds such behavior here by Respondent, and concludes that Respondent also uses the <vertu.ren> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the <vertu.ren> domain name with actual knowledge of Complainant’s rights in the VERTU mark. Complainant urges that because of Respondent’s use of the domain name, including the sale of counterfeit goods and attempt at passing off as Complainant, Respondent must have been aware of Complainant’s rights in the VERTU mark at the time the domain name was registered. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the VERTU mark at the time of registration and thus, registered the <vertu.ren> domain in bad faith under Policy ¶ 4(a)(iii).
Complainant has therefore 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 <vertu.ren> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 20, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page