Screen Actors Guild-American Federation Of Television And Radio Artists v. Lan Wei
Claim Number: FA1606001681144
Complainant is Screen Actors Guild-American Federation Of Television And Radio Artists (“Complainant”), represented by Stephen J. Strauss of BUCHALER NEMER, California, USA. Respondent is Lan Wei (“Respondent”), Peoples’ Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sag.party>, 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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2016; the Complaint was submitted in both Chinese and English. The Forum received payment on June 28, 2016.
On June 28, 2016, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <sag.party> 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 July 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Chinese language Complaint, setting a deadline of July 26, 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@sag.party. Also on July 6, 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 August 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant holds a registration for the SAG trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (as Registry No. 2,410,100, registered Dec. 5, 2000).
The SAG mark is used by Complainant in the operation of a large labor union for actors, broadcasters, journalists and other members of the media.
Complainant hosts a major celebratory SAG party right after each annual SAG AWARDS show for the benefit of all award winners and nominees.
Respondent registered the domain name <sag.party> on January 26, 2016.
The <sag.party> domain name is identical or confusingly similar to Complainant’s SAG trademark.
Respondent has not been commonly known by the domain name.
Complainant has no relationship with Respondent, and Complainant has not given Respondent permission to register and use the domain name.
Respondent is not actively using the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name while knowing of Complainant and its rights in the SAG mark.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language of the Proceedings
The Panel notes that the domain name Registration Agreement applicable to this proceeding is written in Chinese. In the ordinary course, the language of the proceeding would therefore be Chinese. However, in appropriate circumstances, the Panel may elect to employ another language. Here Complainant has requested that the language of the proceeding be English, and Respondent does not oppose that request. Therefore, pursuant to Rule 11(a), the Panel finds that the language requirement has been satisfied through the filing of a Chinese language Complaint and Commencement Notification. Accordingly, the balance of this proceeding will be conducted in English.
(1) the domain name registered by Respondent is substantively identical, and therefore confusingly similar, to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the SAG trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) ....
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <sag.party> domain name is substantively identical, and therefore confusingly similar, to Complainant’s SAG trademark and service mark. The domain name contains the entire mark and differs from it only by the addition of the generic Top Level Domain (“gTLD”) “.party,” which describes an aspect of Complainant’s business. This alteration of the mark, made in forming the domain name, does not save it from the realm of identity or confusing similarity under the standards of the Policy. See DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Forum July 14, 2014):
[B]ecause there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.
However, because every domain name requires a gTLD, the presence of a gTLD in any form is simply irrelevant to a Policy ¶ 4(a)(i) analysis. It would therefore be unnecessary for us to consider the inherently confusing character of the gTLD found in this case standing alone in arriving at a conclusion as to the identity or confusing similarity of the domain name taken as a whole. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Forum Mar. 18, 2015) (finding that the “.technology” gTLD was irrelevant to Policy ¶ 4(a)(i) analysis when assessing confusing similarity between the <citigroup.technology> domain name and the CITIGROUP trademark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii), whereupon the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known as the disputed domain name, that
Complainant has no relationship with Respondent, and that Complainant has not given Respondent permission to register or use the <sag.party> domain name.
Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Lan Wei,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding, based on the WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by a contested domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has not actively used the <sag.party> domain name since it was registered. In the circumstances here presented, we therefore conclude that Respondent is not making either a bona fide offering of goods or services by means of the domain name, as provided in Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of it, as provided in Policy ¶ 4(c)(iii), so as to have demonstrated that it has rights to or legitimate interests in the domain name within the meaning of either of those provisions of the Policy. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s inactive use (called passive holding) of the <sag.party> domain name for what appears to be all of the time following its registration demonstrates, under Policy ¶ 4(a)(iii), its bad faith in the registration and use of the domain name. See, for example, Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (finding that the non-use of a disputed domain name for an extended period shows bad faith registration and use under Policy ¶ 4(a)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the <sag.party> domain name when it registered the domain name. This too is proof of Respondent’s bad faith in registering the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith under Policy ¶ 4(a)(iii) where a panel found that that respondent knew of a UDRP complainant's rights in its UNIVISION mark when registering a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sag.party> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 3, 2016
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