Johannes Schumann v. JACK LIU
Claim Number: FA2210002017109
Complainant is Johannes Schumann ("Complainant"), Florida, USA. Respondent is JACK LIU ("Respondent"), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <50.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on October 23, 2022; Forum received payment on October 23, 2022.
On October 25, 2022, GoDaddy.com, LLC confirmed by email to Forum that the <50.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 26, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@50.com. Also on October 26, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 November 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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.
A. Complainant
Complainant owns a United States trademark registration for a design mark composed of a red speech bubble with the number "50" within it. The mark is registered in class 45, for leasing of internet domain names. The registration states that the mark was first used (and first used in commerce) in November 2021; the registration issued in January 2022. Complainant states that the mark has been used in commerce since March 2015, providing a partial screenshot of an archived copy of a website at <50languages.com>, apparently owned by Complainant and displaying Complainant's design mark. Complainant currently uses the domain name for the 50languages.com website and for related Android and iOS apps. Complainant states that the 50languages.com website had over 20 million page views and over 50 million impressions in the last three years, according to Google Adsense, and that Complainant's apps have been downloaded millions of times.
Respondent is the registrant of the disputed domain name <50.com>, which appears to have been registered in the name of a privacy registration service until the privacy shield was removed by the registrar in connection with this proceeding. The domain name does not currently resolve to a website, and according to the Internet Archive it has not resolved to a website since late 2017. Complainant alleges that Respondent is not making any active use of the domain name.
Complainant contends on the above grounds that the disputed domain name <50.com> is identical or confusingly similar to Complainant's 50 design mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights, and that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel further finds that Complainant has not proved that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <50.com> corresponds to the entire textual component of Complainant's registered 50 design mark, with the ".com" top-level domain appended thereto. Design or figurative elements of a registered mark are largely disregarded for purposes of assessing identity or confusing similarity under paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.10. The Panel considers the disputed domain name to be identical or confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to the textual component of Complainant's registered mark without authorization, and Respondent does not appear to be making any active use of the domain name, suggesting that Respondent lacks rights or legitimate interests in the name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence that the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
These instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See, e.g., Hotel Plaza Ltd., Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., D2008-1760 (WIPO Mar. 18, 2009). In particular, a Respondent's failure to make any active use of a domain name may support a finding of bad faith.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 3.3.
However, passive holding alone is not sufficient, absent at least circumstantial evidence that Respondent's registration and use of the domain name has been targeted at Complainant or its mark. See, e.g., Fiberstar, Inc. v. Merlin Kauffman, FA 1663188 (Forum Apr. 11, 2016) ("Complainant must establish that at the time the Respondent registered the disputed domain name the Respondent knew of and sought to take advantage of the complainant's trademark or service mark rights"); Kanal, Inc. v. Domain Admin, FA 1478238 (Forum Feb. 12, 2013) ("To have registered the domain name in bad faith, Respondent must have been aware of Complainant or its mark when he registered the domain name, and the registration must in some way have been targeted at Complainant or its mark.").
Complainant has not stated the date on which the disputed domain name was registered or acquired by Respondent, and the domain name registration record indicates that the domain name was initially registered in 1996, long before Complainant claims to have commenced use of the corresponding design mark. Even if Respondent did not acquire the domain name until 2017 or later, the Panel considers it unlikely that Respondent was aware of Complainant or Complainant's mark at the relevant time, or that such awareness would have had any influence on Respondent's registration or acquisition of the <50.com> domain name. Accordingly, the Panel finds that Complainant has not proved that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <50.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: November 18, 2022
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