Visor Commerce Limited v. Shenzhen Olight E-commerce Technology Co., Limited
Claim Number: FA2304002041484
Complainant is Visor Commerce Limited (“Complainant”), represented by Paul Wytch,. England. Respondent is Shenzhen Olight E-commerce Technology Co., Limited (“Respondent”), represented by Nazly Bayramoglu, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <obuy.com>, registered with Shenzhen HuLianXianFeng Technology Co.,LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, Charles A. Kuechenmeister, and Carrie Shu Shang, Panelists.
Complainant submitted a Complaint to Forum electronically on April 25, 2023; Forum received payment on April 25, 2023.
On April 29, 2023, Shenzhen HuLianXianFeng Technology Co.,LTD confirmed by e-mail to Forum that the <obuy.com> domain name is registered with Shenzhen HuLianXianFeng Technology Co.,LTD and that Respondent is the current registrant of the name. Shenzhen HuLianXianFeng Technology Co.,LTD has verified that Respondent is bound by the Shenzhen HuLianXianFeng 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 May 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@obuy.com. Also on May 2, 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.
A timely Response was received and determined to be complete on May 26, 2023.
On June 8, 2023 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Paul M. DeCicco, Charles A. Kuechenmeister, and Carrie Shu Shang as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Visor Commerce Limited is in the retail business.
Complainant asserts rights in the ONBUY mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s
<obuy.com> is confusingly similar to Complainant’s ONBUY trademark
because it misspells the mark by deleting the letter “n” and adds the generic
top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <obuy.com> domain name. Respondent is not licensed or authorized to use Complainant’s ONBUY mark and is not commonly known by the 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 offers competing services.
Respondent registered and uses the <obuy.com> domain name in bad faith. Complainant sent a cease-and-desist letter to Respondent.
B. Respondent
Respondent contends as follows:
Complainant fails to prove all three elements of the Policy. Respondent’s disputed domain name is not identical to Complainant’s mark because it deletes the letter “n”.
Complainant fails to prove Respondent lacks rights or legitimate interests in the <obuy.com> domain name. Respondent asserts is has made demonstrable preparations to use the disputed domain name, by actively using it.
Complainant fails to prove Respondent registered and uses the at-issue domain name in bad faith. Respondent argues it does not disrupt Complainant’s business.
Complainant has rights in the ONBUY mark.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent demonstrates rights and/or legitimate interest in the at-issue domain name.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration as well as any of its other national registrations for its ONBUY mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4 (a)(I). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
The at-issue domain name consists of Complainant’s ONBUY trademark less its “n” followed by the “.com” top level domain name. The differences between <obuy.com> and Complainant’s ONBUY trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <obuy.com> domain name is confusingly similar to Complainant’s ONBUY trademark. 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 the 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).
Notwithstanding that Complainant may have made out a prima facie showing that Respondent lacks rights and legitimate interests concerning the at-issue domain name, Respondent nevertheless conclusively establishes its rights and interests therein. Under Policy ¶ 4(c)(i), a respondent demonstrates its rights and legitimate interests in its at-issue domain name, or a name corresponding to the domain name, if the panel finds that before notice of the dispute such respondent used, or made demonstrable preparations to use, the at-issue domain name in connection with a bona fide offering of goods or services. See SPS Commerce, Inc. v. Registration Private / Domains By Proxy, LLC, FA 1724583 (Forum May 24, 2017) (“Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services. In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website… The Panel thus finds that Respondent has rights and legitimate interests in the Domain Name.”). Here, Respondent asserts in its reply to Complainant’s cease and desist letter that it registered <obuy.com> as a sister brand to its existing Olight brand. Respondent shows that “Obuy” has markedly been used in connection with Respondent’s bona fide business interests. Prior to having notice of the parties’ dispute Respondent used “Obuy” in concert with its numerous registered trademarks that commence with “O” including “Olight”, “Oknife”, “Olamp”, “Ostation”, “Obuddy” as well as similarly formed brands. Furthermore, Respondent proffers an August 2022 copyright registration concerning “OBuy” titled software, and has produced business records indicating that Complainant was conducting meetings regarding “Obuy” in the third quarter of 2021. Notably, Respondent’s <obuy.com> website offers at least some of Respondent’s “O” trademark branded products for sale. The Panel thus finds that Respondent made use <obuy.com> in conjunction with its bona fide business interests prior to having notice of the instant dispute pursuant to Policy ¶ 4 (c)(i).
Complainant suggests that Respondent registered and used its confusingly similar domain name to take advantage of publicity surrounding Complainant’s business. Such use of the domain name might tend to show Respondent’s lack of rights and legitimate interests in the domain name. However, Respondent’s use of “Obuy” prior to the instant dispute in conjunction with Respondent’s own business interests indicates that any coincidence between Complainant’s publicity and Respondent domain name activity was benign and not the result of a scheme by Respondent to opportunistically trade on a confusingly similar version of Complainant’s mark.
Given the forgoing, Respondent demonstrates its rights and legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
In light of the Panel’s dispositive finding on the issue of rights and legitimate interests, we find it unnecessary to address Policy ¶ 4(a)(iii).
Respondent requests a finding of reverse domain name hijacking. However, even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”) In the instant case, Complainant suggests that one reason for filing its complaint was the fact that the Respondent’s domain name and website seemed to become active shortly after much publicity concerning Complainant’s business. Thus it appeared to Complainant that Respondent was intent on opportunistically taking advantage of the spike in publicity to trade off Complainant’s ONBUY trademark. Although the Panel fails to find that Respondent had any intent to trade off Complainant’s mark, Complainant’s claim is not baseless and without more does not convince the Panel that Complainant acted in bad faith in filing its complaint.
On the one hand, it appears that Complainant’s filing did not contain sufficient evidence to carry the day regarding Respondent’s lack of rights and legitimate interest in the domain name. On the other hand, Complainant prevailed under Policy ¶ 4 (a)(i) and it is not apparent from the record that Complainant knew or should have known to a reasonable certainty that it would fail under either Policy ¶¶ 4 (a)(ii) or (a)(iii). On balance the Panel finds that Complainant did not engage in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent). Therefore, Respondent’s request for a finding of reverse domain name hijacking is denied.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <obuy.com> domain name shall REMAIN WITH Respondent.
Paul M. DeCicco (Chair),
Charles A. Kuechenmeister,
and Carrie Shu Shang,
Panelists
Dated: June 13, 2023
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