DECISION

 

Totem Core Ltd v. Zhao Li

Claim Number: FA1609001693197

PARTIES

Complainant is Totem Core Ltd (“Complainant”), represented by Julien Jégard, Dublin, Ireland.  Respondent is Zhao Li (“Respondent”), Beijin, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The disputed domain name is «idancer.com», registered with DropCatch.com 727 LLC.

 

PANEL

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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 12, 2016; the Forum received payment on September 12, 2016.

 

On September 16, 2016, DropCatch.com 727 LLC confirmed by e-mail to the Forum that the disputed domain name «idancer.com» is registered with DropCatch.com 727 LLC and that Respondent is the current registrant of the name.  DropCatch.com 727 LLC has verified that Respondent is bound by the DropCatch.com 727 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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@idancer.com.  Also on September 19, 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.

 

A timely Response was received and determined to be complete on October 6, 2016.

 

On October 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

a.    Complainant has rights in the IDANCER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,530,026, registered on May 13, 2014).

b.    Respondent’s disputed domain name «idancer.com» is identical to the IDANCER mark.

c.    Respondent acquired the disputed domain name «idancer.com» only after Complainant inadvertently allowed the registration to lapse through the use of a “drop catch” service.

d.    Respondent registered the disputed domain name «idancer.com» in bad faith because it did so with actual knowledge of Complainant’s IDANCER mark and only after Complainant inadvertently allowed the registration to lapse through the use of a “drop catch” service.

 

B.   Respondent

a.    Complainant’s IDANCER mark is not registered in China where Respondent is located.

b.    Respondent’s name is composed of three Chinese characters, two of which mean “dancer,” while the third is pronounced as the English language letter “I”.

c.    Respondent is a non-profit conducting non-commercial activities.

d.    Respondent acquired the disputed domain name «idancer.com» through a public auction.

e.    Respondent had no knowledge of Complainant or its IDANCER mark until being contacted by Complainant after acquiring the disputed domain name «idancer.com».

f.     Respondent acquired the disputed domain name «idancer.com» after it had been abandoned by Complainant.

 

 

FINDINGS

 

1.    Complainant owns the trademark IDANCER in the United States of America, since before the disputed domain name was registered by Respondent.

 

2.    Respondent was aware of the Complainant’s rights in the trademark IDANCER and Complainant’s rights in the disputed domain name before it became available, yet he purchased the disputed domain name in which Complainant’s trademark is incorporated.

 

3.    Respondent has never been commonly known by the disputed domain name or the trademark IDANCER (Annex 3 of the Response).

 

4.    Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademark IDANCER, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services (Annex 8 of the Response).

 

5.    Respondent claims to be a non-profit organization, nonetheless, there is no evidence that responded is indeed an organization.

 

6.    Complainant offered to buy the disputed domain name from Respondent. However, Respondent is currently preventing the owner of the trademark from reflecting the mark in the corresponding domain name.

 

DISCUSSION

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.

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.

 

Identical and/or Confusingly Similar

Complainant contends to be the owner of the trademark IDANCER in the United States of America through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,530,026, registered on May 13, 2014). to identify: “Electronic software for computers and cellular telephones for viewing images and videos featuring male and female dancers dancing either on their own music or on music provided by the end user”.

 

a)     Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the trademark IDANCER:

 

·         United States Trademark Registration No. 4,530,026, registered on May 13, 2014). to identify: “Electronic software for computers and cellular telephones for viewing images and videos featuring male and female dancers dancing either on their own music or on music provided by the end user”.

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated goods. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[2].

 

Thus, Complainant established its rights in the trademark IDANCER[3].

 

It is important to note that the trademark does not required to be registered where Respondent is located. The Policy only requires the existence of a trademark, which has been duly proven in this case.

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark IDANCER for purposes of Paragraph 4(a)(i) of the Policy.

 

b)     Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

 

Complainant alleges that the disputed domain name is confusingly similar with the trademark IDANCER.

 

On the first place, before establishing whether or not the disputed domain name  is confusingly similar to the Complainant’s trademark, the Panel wants to point out that the addition of generic top-level domain (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[4].

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”

 

Furthermore, the Panel considers that the reproduction of the KINGSTON trademark, by the disputed domain name, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[5]. Especially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the trademark owner.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[6].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[7].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because of the following: i) The disputed domain name was originally registered by Complainant, until August 3, 2016 ii) Respondent registered the disputed domain name using a drop catch service; iii) Complainant has previous rights in the IDANCER trademark registration; iv) In April 29, 2016, Complainant announced its new services to be provided by means of the disputed domain name; and v) Respondent knew of Complainant’s rights in the disputed domain name, when applying for the drop catch service.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondent’s rights or legitimate interests in the disputed Domain Name.

 

Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent states that he is the founder of one Non-Profit Organization in China and that there is no confusion with Complainant’s trademark as “idancer” in Chinese means love to dance.

 

This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name. Simply stating what he is the founder of a non-profit organization, is not evidence of Respondent’s rights or legitimate interest in the disputed domain name.

 

Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, since as Respondent stated, he is not offering anything for sale. Moreover, the contract for the website design does not affect the fact that Respondent is not offering of goods or services, which fails to comply with the defense set forth under Policy ¶ 4(c)(i)

 

Furthermore, Annex 3 to the Response, confirm that Respondent is not commonly known by the disputed domain name[8], concluding that the respondent was not and has never been commonly known by the disputed domain name, which fails to comply with the defense set forth under Policy ¶ 4(c)(ii).

 

Finally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Having few lines written in the website to which the disputed domain name resolves to is not a legitimate noncommercial or fair use.

 

In fact, the website is clearly reaching for an economical profit by means of donations, which are easier to obtain in a website with high traffic than in a new website. In fact, Respondent acquired the disputed domain name from a service that targets only highly desirable domain names, which therefore are sold at a higher price than other domain names simply purchased and not auctioned. Consequently, the disputed domain name was acquired based on its already high traffic which cannot be considered as a legitimate noncommercial or fair use, which fails to comply with the defense set forth under Policy ¶ 4(c)(iii)

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

The disputed domain name was acquired by means of an auction (drop catch service), on August 10, 2016, in which Respondent paid USD$390, to obtain the disputed domain name for an allege non-profit organization.

 

On August 26, 2016, Complainant explained to Respondent that the disputed domain name was of their property until August 3, 2016, date in which it lapsed without renovation due to an error in Complainant’s servers.

 

Respondent informed Complainant that the trademark registration IDANCER in the United States of America was not binding to him and that there was no confusion between the software of Complainant and Respondent use. Furthermore, that Respondent acquired the disputed domain name legally.

 

The legality of the acquisition of the disputed domain name is not hereby questioned as all domain names obtained by an auction or a purchase are legally acquired. Notwithstanding, that does not necessarily mean that the registration was done in good faith.

 

The disputed domain name was acquired by means of an auction provided by a drop catch service, which means that Respondent knew or should have known of the existence of a previous owner of the disputed domain name when he applied for the drop catch service.

 

As explained before, the drop catch services are only offered in highly desirable domain names, due to their traffic, popularity or interest they have risen. If a domain names already has traffic, it is more valuable than a new domain name that has to be positioned in the market.

 

Annex 6 to the Response, is clear on why the traffic gained by Complainant is beneficious for Respondent, since Respondent’s website has a link for “donations”.

 

None of the evidence file is clear as to what is the purpose of Respondent’s website. Not even the contract for the website design. The only thing that appears clearly is that the squirrel is inviting you: “to talk with your body and dance with your soul” and donate.

 

Moreover, when the legitimate owner of the disputed domain name informed to Respondent that they were willing to regain the disputed domain name, Respondent refused to even recognized the trademark registration legality.

 

Hence, refusing to transfer the disputed domain name to the legitimate owner of the trademark IDANCER, even though Respondent had actual knowledge of Complainant’s rights over the trademark and domain name, and profiting from the trademark IDANCER in the disputed domain name by attracting Internet users to the resolving website where Respondent obtains donations creates confusion as to Complainant’s affiliation or sponsorship of the disputed domain name and website. This is indicative of bad faith under Policy ¶ 4(b)(iv)[9]. 

 

Consequently, the disputed domain name incorporating Complainant’s trademark, possibly disrupt Complainant’s business and create a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement, thus, evidencing a bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).

 

Therefore, the three elements of the Policy 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain names.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the disputed domain name «idancer.com» domain name be TRANSFERRED from Respondent to Complainant.

 

 

Fernando Triana, Esq, Panelist

Dated:  October 21, 2016