Apple Inc. v. sheng jun / Sheng Sheng
Claim Number: FA2002001883240
Complainant is Apple Inc. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is sheng jun / Sheng Sheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nasicloud.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
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 February 13, 2020; the Forum received payment on February 13, 2020.
On February 17, 2020, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <nasicloud.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology 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 February 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2020 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@nasicloud.com. Also on February 24, 2020, 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 March 23, 2020, 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of the Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding instead be English. In support of this request, Complainant submits that:
a. the domain name registered by Respondent is rendered in English, which demonstrates that Respondent is conversant with English;
b. Respondent’s website at <nasicloud.com> has an English-language version as well as a Chinese version;
c. it appears that Respondent or Respondent’s affiliate has filed an application with the United States Patent and Trademark Office (“USPTO”) for the English language mark, NASiCloud (Serial No. 88/067,606), and that, in that application, the applicant declared that the NASiCLOUD mark was used in US commerce at least as early as March 18, 2018;
d. it further appears that Respondent and/or its affiliate offers to US consumers a “NasCloud” app available in Apple’s US App Store and at Google Play; and
e. translating the documents required to prosecute this proceeding into Chinese would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding.
Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement, “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant is a world-famous designer, manufacturer and marketer of mobile communication and media devices and personal computers, as well as a seller of a variety of related software, services, accessories and third-party digital content and applications.
Complainant created “iCloud” computing software to enable its customers to and store their digital content securely online.
Complainant holds a registration for the iCLOUD trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,744,821 registered February 2, 2010.
Respondent registered the domain name <nasicloud.com> on July 15, 2018.
The domain name is confusingly similar to Complainant’s iCLOUD mark as it includes the mark in its entirety, merely adding the generic term “nas” (an abbreviation of “network attached storage”) and the generic Top Level Domain (“gTLD”) “.com.”
Respondent is not authorized to use Complainant’s iCLOUD mark.
Respondent has not been commonly known by the domain name.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to a webpage at which Respondent sells digital storage products that compete with the business of Complainant.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent’s use of the domain name causes confusion among Internet users as to the possibility of Complainant’s association with it.
Respondent seeks to profit financially from this confusion.
Respondent knew of Complainant’s rights in the iCLOUD mark prior to its registration of the domain name.
Respondent registered and uses 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 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 to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent 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 as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, 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). But see 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”).
Complainant has rights in the iCLOUD trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of 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, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 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 <nasicloud.com> domain name is confusingly similar to Complainant’s iCLOUD trademark and service mark. The domain name incorporates the mark in its entirety, merely adding the generic term “nas” (an abbreviation for “network attached storage,” which can be taken to relate to an aspect of Complainant’s computer file storage business), plus 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, for example, Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum November 18, 2005) (finding that the addition of both a generic term and the gTLD “.com” to the mark of another in creating a domain name did not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark the generic term “finance,” which described a UDRP complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s domain name from that complainant’s mark under Policy ¶ 4(a)(i)). As to the latter point, this is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <nasicloud.com> 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 August 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 September 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 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 December 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 they are 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)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <nasicloud.com> domain name, and that Complainant has not authorized Respondent to use the iCLOUD mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “sheng jun / Sheng Sheng,” 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 ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent employs the domain name to sell digital storage products that directly compete with the business of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016), finding that:
[U]se of a domain to sell products and/or services that directly compete 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).
The Panel thus finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <nasicloud.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that a respondent’s use of a disputed domain name to offer services in competition with the business of a UDRP complainant disrupted that complainant’s business and thus demonstrated bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that the <nasicloud.com> domain name, which we have found to be confusingly similar to Complainant’s iCLOUD trademark and service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. This too demonstrates Respondent’s bad faith in registering and using the domain name. See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1541484 (Forum February 28, 2014) (finding that a respondent had engaged in bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv), where that respondent used a domain name that was confusingly similar to the mark of a UDRP complainant to attract Internet users to its own website where it sold competing insurance services).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the iCLOUD mark when it registered the <nasicloud.com> domain name. This further illustrates Respondent’s bad faith in registering the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by respondent of a UDRP complainant’s rights in a mark from which that respondent’s domain name was derived, and thus further finds that respondent’s bad faith in registering the domain name] through the name used for the domain and the use made of it.
The Panel therefore 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 <nasicloud.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 24, 2020
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