Le Shi Internet Information & Technology (Beijing) Corp. v. bo liu / Shen Zhen Shi Dong Fang Zhi Zhou Wang Luo Ke Ji You Xian Gong Si
Claim Number: FA1610001697276
Complainant is Le Shi Internet Information & Technology (Beijing) Corp. (“Complainant”), represented by B. Anna McCoy of Alleman Hall McCoy Russell & Tuttle LLP, Oregon, United States. Respondent is bo liu / Shen Zhen Shi Dong Fang Zhi Zhou Wang Luo Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <letvmobilestore.com>, registered with NameSilo, LLC.
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 October 7, 2016; the Forum received payment on October 7, 2016.
On October 10, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <letvmobilestore.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@letvmobilestore.com. Also on October 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 November 7, 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 is a global technology company based in China and doing business under the name and mark LETV.
Complainant holds a registration for the LETV trademark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,239,960, registered November 13, 2012.
Respondent registered the domain name <letvmobilestore.com> on or about February 19, 2016.
The domain name is confusingly similar to Complainant’s LETV mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the LETV mark in a domain name.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to attempt to pass itself off as Complainant.
Although Complainant’s products are only intended to be sold in Asia, Respondent uses the domain name to sell those products in the United States.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name with actual knowledge of Complainant’s LETV mark and its rights therein.
Complainant has addressed to Respondent a letter demanding that Respondent cease all use of the LETV mark, transfer the domain name to Complainant, and discontinue any use of copyrighted images owned by Complainant, but no response has been received from Respondent.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 to 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 as 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 LETV mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is so 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, for example, 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 <letvmobilestore.com> domain name is confusingly similar to Complainant’s LETV mark. The domain name wholly incorporates the mark and merely adds the generic terms “mobile” and “store,” which together describe an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the identical mark of a UDRP complainant combined with a generic term).
See also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the addition to the mark of another of the generic top-level domain “.com” in creating a domain name was insufficient to differentiate that domain name from the mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a 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) before 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 that Respondent has not been commonly known by the domain name <letvmobilestore.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the LETV mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “bo liu / Shen Zhen Shi Dong Fang Zhi Zhou Wang Luo Ke Ji You Xian Gong Si,” 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <letvmobilestore.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that Respondent uses the domain name to attempt to pass itself off as Complainant, and that, although Complainant’s products are only intended to be sold in Asia, Respondent uses the domain name to sell those products in the United States. In the circumstances here presented, we may comfortably presume that Respondent does this in order to profit financially. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the domain name as described in those provisions. See, for example, Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (the panel there finding a respondent’s attempt to pass itself off as a UDRP complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where that respondent used a disputed domain name to present users with a website that was nearly identical to that complainant’s official website).
See also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that using domain names that were confusingly similar to the mark of a UDRP complainant to sell its goods without that complainant’s authority was not a bona fide use).
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested <letvmobilestore.com> domain name to profit by selling Complainant’s products without its consent. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002):
Unauthorized use of Complainant’s … mark [in a domain name] to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).
See also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002), finding, under Policy ¶ 4(b)(iii) that:
[U]se of domain names [which are confusingly similar to the mark of another] to sell [that] Complainant’s goods and services without [that] Complainant's authority . . . is bad faith use of a confusingly similar domain name.
We are also convinced by the evidence that Respondent knew of Complainant and its LETV mark when it registered the <letvmobilestore.com> domain name. This further demonstrates that Respondent registered the domain name in bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a respondent was “well-aware” of a UDRP complainant’s mark at the time of its registration of a confusingly similar domain name).
Accordingly, the Panel 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 <letvmobilestore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 8, 2016
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