AssetMark, Inc. v. YangZhiChao
Claim Number: FA2302002033607
Complainant is AssetMark, Inc. (“Complainant”), represented by Sharoni S. Finkelstein of Venable LLP, USA. Respondent is YangZhiChao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assemark.com>, registered with 22net, Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on February 27, 2023; Forum received payment on February 27, 2023.
On February 28, 2023, 22net, Inc. confirmed by e-mail to Forum that the domain name is registered with it and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by its 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 March 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@assemark.com. Also on March 1, 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, the Forum appointed Debrett G. Lyons 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.
The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:
“Pursuant to verification received from the Registrar, the Registration agreement is in Chinese. You have two options: 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English.”
Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. To put those submissions into context, it is noted here that Complainant provides wealth management services, and the disputed domain name resolves to a webpage that displays links to “Wealth Management Consultant”, “Wealth Management Advisor” and “Best Wealth Management Firms”.
Complainant submits that the domain name is a relatively obvious manipulation of the trademark and the Panel agrees that this provides some evidence of an understanding of English (see, for example, Micro Electronics, Inc. v. Zhichao Yang, FA 2212002024806 (Forum Jan. 25, 2023) holding that “[t]he misspelling in this case … is some small measure of facility in English.). Complainant next submits that the domain name resolves to a webpage with English language links connected to Complainant’s business under the trademark. The Panel finds it likely that those links were autogenerated and say nothing of Respondent’s capacity in English. Complainant goes on to submit that Respondent is a serial cyberquatter who has been an adverse party in many UDRP proceedings. After citing only some of those cases, Complainant states that “[i]n each case, Respondent registered one or more domain names with 22net, Inc., one letter off from the complainant’s mark.” Albeit that the name of domain name registrant is a common one, the Panel takes account of these other, unusual, coincidences in reaching its determination, pursuant to Rule 11(a), that the proceedings should be conducted in English.
A. Complainant
Complainant asserts trademark rights in ASSETMARK. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides wealth management technology and support systems for financial advisors under the trademark, ASSETMARK, registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 4,676,341, from January 20, 2015;
2. the disputed domain name was registered on December 30, 2022 and resolves to a webpage that displays generic links to Complainant’s area of business interest; and
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant has registered the trademark with the USPTO, a national trademark authority, and so has rights.
The disputed domain name omits a single letter from the trademark and adds the “.com” gTLD after the trademark. The Panel finds that the domain name is confusingly similar to the trademark (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”); Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) finding <pfzer.com> confusingly similar to the complainant’s PFIZER mark; conversely, Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) finding <twitcch.tv> confusingly similar to TWITCH TV).
The Panel accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, Case No. D2000‑0624 (WIPO Aug. 21, 2000).
The domain name holder is “YangZhiChao”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.
Complainant provides evidence that the disputed domain name resolves to a webpage with links to third parties offering services competitive with those provided by Complainant’s business under the trademark. As stated, it appears to the Panel likely that those links have been autogenerated, but it is well established by earlier UDRP decisions that a complainant is responsible for material appearing at a site resolving from the disputed domain name, whether or not posted there by that complainant.
Clearly the described misuse of Complainant’s trademark is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the name and the Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
The Panel finds that the disputed domain name directs Internet users to an online location which promotes services competitive with Complainant’s business under the trademark and most likely does so for commercial gain by way of click-through revenue. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied (see, for example, Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <assemark.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 28, 2023
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