Apple Inc. v. zhang guangyong
Claim Number: FA1911001872985
Complainant is Apple Inc. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is zhang guangyong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <icloudhome.com> and <icloud5.com>, registered with Shanghai Meicheng Technology Information Development Co., Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2019; the Forum received payment on November 25, 2019.
On November 29, 2019, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the Forum that the <icloudhome.com> and <icloud5.com> domain names are registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the names. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., Ltd. 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 December 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2019 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@icloudhome.com, postmaster@icloud5.com. Also on December 6, 2019, 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 December 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant designs, manufactures, and markets mobile communication and media devices and personal computers, and sells a variety of related software, services, accessories, and third-party digital content and applications. Complainant has rights in the ICLOUD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,744,821, registered Feb. 2, 2010) along with many other jurisdictions around the globe. See Compl. Exs. E (USPTO registrations) and F (list of worldwide registrations). Respondent’s <icloudhome.com> and <icloud5.com> domain names are confusingly similar to Complainant’s mark as they add either the term “home” or the number “5” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <icloudhome.com> and <icloud5.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make any use of the domain names and would likely use the domain names to compete with Complainant if it did so in the future. See Compl. Ex. CC.
Respondent registered and uses the <icloudhome.com> and <icloud5.com> domain names in bad faith. Respondent registered multiple domain names incorporating the ICLOUD mark, demonstrating a pattern of bad faith. Additionally, Respondent’s domain names will likely confuse Internet users into believing some sort of relationship exists between the itself and Complainant. Further, Respondent fails to make any use of the resolving webpages associated with the domain names. See Compl. Ex. CC. Moreover, Respondent had actual knowledge of Complainant’s rights in the ICLOUD mark given its incorporation of the entire mark in each domain name and given the longstanding fame of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that designs, manufactures, and markets mobile communication and media devices and personal computers, and sells a variety of related software, services, accessories, and third-party digital content and applications.
2. Complainant has established its trademark rights in the ICLOUD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,744,821, registered Feb. 2, 2010) along with many other jurisdictions around the globe.
3. Respondent registered the <icloudhome.com> and <icloud5.com> domain names on April 26, 2016 and May 11, 2015, respectively.
4. Respondent fails to make any use of the domain names and would likely use the domain names to compete with Complainant in the future.
5. Accordingly, the evidence shows that Respondent has no rights or legitimate interests in the disputed domain names.
6. The evidence shows that Respondent registered and used the disputed domain names 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:
(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. The Panel has a discretion to decide, per Rule 11, that because the Respondent signed an agreement in Japanese, the Complaint should be resubmitted in Japanese and the case recommenced.
Alternatively, it is open to the Panel to decide to continue the case with the English-language submission of the Complaint. See Rule 11.
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. As noted, the Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant argues the following regarding its position that the language should be English: (1) the domain names use English characters; (2) Respondent uses the email address hubonew@qq.com, which is affiliated with the English website <hubo.net>; (3) Respondent owns numerous English language domain names; (4) Respondent has worked with and is currently working with companies doing business in English, including listing various domain names for sale on the English website <sedo.com>; and (5) conducting the proceeding in Chinese would overly burden Complainant.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the 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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ICLOUD mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,744,821, registered Feb. 2, 2010) along with many other jurisdictions around the globe. See Compl. Exs. E and F. Registration of a mark with multiple trademark authorities sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Accordingly, the Panel finds that Complainant has established rights in the ICLOUD mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ICLOUD mark. Complainant argues that Respondent’s <icloudhome.com> and <icloud5.com> domain names are confusingly similar to Complainant’s mark as they add either the term “home” or the number “5” along with the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds that the disputed domain names are confusingly similar to the ICLOUD mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ICLOUD trademark and to use it in its domain names, add either the term “home” or the number “5” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <icloudhome.com> and <icloud5.com> domain names on April 26, 2016 and May 11, 2015, respectively;
(c) Respondent fails to make any use of the domain names and would likely use the domain names to compete with Complainant in the future;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <icloudhome.com> and <icloud5.com> domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “zhang guangyong / zhang guangyong” as the registrant for both domain names, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. See Compl. Ex. A. Accordingly, the Panel agrees that Respondent is not commonly known by either domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent fails to make any use of the domain names and would likely use the domain names to compete with Complainant in the future. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). On Complainant’s provided exhibit list it purports to submit evidence of the resolving webpages for each domain name in Exhibit CC, but the submitted documents do not appear. However, on the totality of the evidence, the Panel finds Respondent fails to make use of the domain names, indicative of possession no rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered multiple domain names incorporating the ICLOUD mark, demonstrating a pattern of bad faith. The registration of multiple confusingly similar domain names incorporating a complainant’s mark can demonstrate bad faith registration. See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sep. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”). Here, as Respondent registered two domain names containing the entire ICLOUD mark, the Panel agrees that Respondent’s registration of multiple domain names in the present case provides evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant claims Respondent’s registration of the confusingly similar domain names will likely confuse Internet users into believing some sort of relationship exists between the itself and Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark, even where the domain name resolves to an inactive website, can evince bad faith under Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Accordingly, as the Panel agrees with Complainant, the Panel finds Respondent attempted to trade off the goodwill of Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues Respondent fails to make any use of the resolving webpages associated with the domain names. Passively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes again that evidence on this issue has not been included . However, on the totality of the evidence, the Panel finds that Respondent has failed to use the domain names actively and thus in bad faith under the Policy.
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registering the <icloudhome.com> and <icloud5.com> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the worldwide fame and longstanding use of the mark in commerce. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ICLOUD mark and in view of the conduct that Respondent has engaged in concerning the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icloudhome.com> and <icloud5.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 31, 2019
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