Sico Incorporated v. sunkai
Claim Number: FA1605001673359
Complainant is Sico Incorporated (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado, United States. Respondent is sunkai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sicobuffet.com>, registered with HiChina Zhicheng Technology Limited.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2016; the Forum received payment on May 4, 2016. The Complaint was submitted in both Chinese and English.
On May 5, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <sicobuffet.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2016 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@sicobuffet.com. Also on May 11, 2016, 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 June 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant is a leading, worldwide manufacturer of mobile and folding products. Complainant has registered the SICO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 748,458, registered April 23, 1963), which demonstrates Complainant’s rights in the mark. The <sicobuffet.com> domain is confusingly similar to Complainant’s mark as it incorporates the SICO mark in its entirety, merely adding the descriptive term “buffet” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Respondent is not licensed or authorized to use Complainant’s mark. Respondent is not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Respondent uses its disputed domain name to sell competing products to consumers.
Respondent has registered and is using the disputed domain name in bad faith. Complainant previously filed an action with the Forum regarding the <sicobuffet.com> domain; transfer of the domain to Complainant was ordered. Respondent has, once again, acquired the domain, which constitutes a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). Respondent’s use of the domain to sell products that are in direct competition with Complainant violates Policy ¶ 4(b)(iii). Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv) by using the domain to sell competing products. The obvious connection between Respondent’s domain and Complainant’s mark suggests opportunistic bad faith on the part of Respondent. Respondent registered the domain with constructive and/or actual knowledge of Complainant’s mark.
Respondent
Respondent did not submit a Response in this proceeding.
The Panel finds Complainant is entitled to the requested relief of transfer of the <sicobuffet.com> 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."
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); 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.”).
Preliminary Issue: Language of the Proceedings
The language of the registration agreement for the domain name is Chinese. The amended Complaint was submitted in English and in 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 panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the English language included in the Registration Agreement. 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). The Panel has also considered 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.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive uncontested evidence has been adduced by Complainant that Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Complainant is a leading, worldwide manufacturer of mobile and folding products. Complainant has registered the SICO mark with the USPTO (e.g., Reg. No. 748,458, registered April 23, 1963), which Complainant argues demonstrates its rights in the mark. Panels have found trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), even where the respondent resides or operates in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in the SICO mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <sicobuffet.com> domain is confusingly similar to Complainant’s mark as it incorporates the SICO mark in its entirety, merely adding the descriptive term “buffet” and the gTLD “.com.” Panels have held that the addition of a descriptive term to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Panels have also found that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “sunkai” as registrant and Respondent has not provided any evidence for the Panel’s consideration. Therefore, the Panel finds there is no basis in the available record to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain name to sell competing products, namely buffets, to consumers. Panels have held that a respondent’s use of a domain to sell products and/or services that are in direct competition with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant asserts that it previously filed an action with the Forum against Respondent regarding the <sicobuffet.com> domain, and that transfer of the domain to Complainant was ordered. See SICO, INC. v. Kai sun / sun kai, FA1608976 (Forum April 23, 2015). Somehow, according to Complainant, Respondent has, once again, acquired the domain. Panels have held that a respondent has demonstrated a pattern of bad faith registration and use under Policy ¶ 4(b)(ii) where the respondent has been the subject of previous adverse UDRP rulings. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant alleges that Respondent’s use of the domain to sell products that are in direct competition with Complainant violates Policy ¶ 4(b)(iii). Panels have concluded that a respondent’s use of a domain to sell products and/or services that are in direct competition with a complainant’s business constitutes bad faith registration and use per Policy ¶ 4(b)(iii). 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 Respondent registered and is using the domain in bad faith per Policy ¶ 4(b)(iii).
Complainant argues that Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv) by using the domain to sell competing products. Panels have held that a respondent demonstrates bad faith registration and use where it uses a domain to sell products and/or services that compete directly with a complainant’s business. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent has engaged in behavior proscribed by Policy ¶ 4(b)(iv).
Respondent contends that the obvious connection between Respondent’s domain and Complainant’s mark suggests opportunistic bad faith on the part of Respondent. Complainant notes that it sells buffets under the SICO mark, and that Respondent is using the disputed domain to sell these same products. Panels have determined that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) where its disputed domain is so obviously connected with a complainant that registration by anyone other than complainant is suggestive of opportunistic bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”). Therefore, the Panel finds that Respondent registered and is using the domain in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the domain with constructive and/or actual knowledge of Complainant’s mark. Complainant asserts that the fame of the SICO mark, proven by Complainant’s numerous trademark registrations, put Respondent on notice of Complainant’s SICO mark and its rights therein. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Additionally, Complainant asserts that it previously filed an action with the Forum against Respondent regarding the <sicobuffet.com> domain name and therefore Respondent was aware of Complainant’s rights when it reacquired the domain. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <sicobuffet.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 9, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page