Nutramax Laboratories, Inc. v. Yang Zhi Chao
Claim Number: FA2302002032946
Complainant is Nutramax Laboratories, Inc. (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia. Respondent is Yang Zhi Chao (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <denamari.com>, registered with eName Technology 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 22, 2023; Forum received payment on February 22, 2023.
On February 22, 2023, eName Technology Co., Ltd. confirmed by e-mail to Forum that the <denamari.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName 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 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2023 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@denamari.com. Also on February 28, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In fact, prior panels have found Respondent proficient in English. After considering the circumstance of the present case including Respondent’s failure to object to going forward in English, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, Nutramax Laboratories, Inc. is in the nutritional and dietary supplement business.
Complainant asserts rights in the DENAMARIN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) as wells as its other registrations for DENAMARIN worldwide.
Respondent’s <denamari.com> is confusingly similar to Complainant’s DENAMARIN trademark because it contains the mark with the last letter “n” deleted and adds the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <denamari.com> domain name. Respondent is not licensed or authorized to use Complainant’s DENAMARIN mark and is not commonly known by the at-issue domain name. Respondent also does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to display pay-per click hyperlinks that compete with Complainant.
Respondent registered and uses the <denamari.com> domain name in bad faith. Respondent has a pattern of bad faith registration because of its two prior UDRP proceedings that resulted in transfer to Complainant. Respondent disrupts Complainant’s business by using the at-issue domain name to display competing hyperlinks. Respondent creates a likelihood of confusion by attempting to pass itself off as Complainant for commercial gain. Respondent had actual knowledge of Complainant’s rights in the DENAMARIN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DENAMARIN trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the DENAMARIN trademark.
Respondent uses the at-issue domain names to address a website that displays pay-per-click hyperlinks.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its DENAMARIN trademark as well as registrations for such mark with other bona fide trademark registrars worldwide. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <denamari.com> domain name consists of Complainant’s DENAMARIN trademark less its second “n” with all followed by the “.com” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish Respondent’s <denamari.com> domain name from Complainant’s DENAMARIN mark. Therefore, the Panel concludes that Respondent’s <denamari.com> domain name is confusingly similar to Complainant’s DENAMARIN trademark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for <denamari.com> ultimately indicates that “Yang Zhi Chao” is the domain name’s registrant and there is nothing in the record before the Panel that tends to prove that Respondent is known by the <denamari.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent’s <denamari.com> domain name addresses a website containing pay-per-click links to Complainant as well as to competing third parties. Respondent’s use of the domain name to promote pay-per-click links is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
Respondent’s <denamari.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has a history of domain name abuse including two prior adverse UDRP proceedings that resulted in the disputed domain names being transferred from Respondent to Complainant. Respondent’s record reveals a pattern of bad faith domain name registration and use by Respondent and is indicative of Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”); see also, Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Next and as mention above regarding rights and legitimate interests Respondent uses the at-issue domain name to display pay-per-click links. Such use of the domain name is disruptive to Complainant’s business and capitalizes on the confusion that Respondent created between the domain name and Complainant’s trademark to drive internet traffic to the at-issue domain name and its website. Respondent’s use of <denamari.com> in this manner shows Respondent’s bad faith registration and use of <denamari.com>pursuant to Policy¶ 4(b)(iii) and Policy¶ 4(b)(iv). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”); see also, Plain Green, LLC v. wenqiang tang, FA 1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Additionally Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will inadvertently type the malformed string when searching for content related to the domain name’s target trademark and/or upon reading the domain name will overlook the misspelling and subsequently believe the domain name is related to, or sponsored by, the target trademark. In the instant case, Respondent’s <denamari.com> domain name contains a recognizable variant of Complainant’s trademark notwithstanding that an “n” has been removed from the domain name’s embedded mark. The domain name thus contains a prospective misspelling of Complainant’s mark that might be typed inadvertently when an internet user is intent on typing Complainant’s trademark, and if not read carefully the domain name might deceptively pass for one of Complainant’s genuine domain names. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the DENAMARIN mark at the time it registered <denamari.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s DENAMARIN trademark and from Respondent’s overt misspelling of Complainant’s mark as embedded in the at-issue domain name. Respondent’s registration and use of <denamari.com> with knowledge of Complainant’s rights in DENAMARIN further shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <denamari.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 27, 2023
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