HARMAN INTERNATIONAL INDUSTRIES, INC. v. Joyce Cheadle / chen jia jin
Claim Number: FA1905001842556
Complainant is HARMAN INTERNATIONAL INDUSTRIES, INC. (“Complainant”), represented by CitizenHawk, Inc., California, US. Respondent is Joyce Cheadle / chen jia jin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jbloken.com>, <jbloaen.com>, <jbluen.com>, and <jblus.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and 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 known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2019; the Forum received payment on May 10, 2019.
On May 13, 2019; May 15, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd.; Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <jbloken.com>, <jbloaen.com>, <jbluen.com>, and <jblus.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. and Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. and 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 May 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2019 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@jbloken.com, postmaster@jbloaen.com, postmaster@jbluen.com, postmaster@jblus.com. Also on May 28, 2019, 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 June 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel, under UDRP Rule 11(a), has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant argues that Respondent is conversant and proficient in English as indicated by the fact that the WHOIS information, Respondent’s email address, and all the content at the resolving websites of the disputed domain names are in English. See Amend. Compl. Ex. J and H. Additionally, Complainant contends that Respondent has been named in numerous UDRP proceedings and has been found suitable familiar with the English language for such proceedings to be conducted in English. See Amend. Compl. Ex. N.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant makes the following contentions: (1) that the IP address is the same for all four disputed domain names; (2) three of the disputed domain names have the same registrar, Alibaba Cloud Computing; (3) the website content is essentially the same for all four disputed domain names; (4) the address in the registrant information is the same for all four disputed domain names; (5) the registrant has domain names sharing same registrant names and address; and (6) both Registrant names uses the same email address.
The Panel finds the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Throughout the decision, the Respondents will be collectively referred to as “Respondent.”
A. Complainant
i) Complainant operates in the consumer audio electronics industry. Complainant has rights in the JBL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 782,327 registered December 29, 1964). See Amend. Compl. Ex. E. Respondent’s <jbloken.com>, <jbloaen.com>, <jbluen.com>, and <jblus.com> domain names are identical or confusingly similar to Complainant’s JBL mark because it wholly incorporates Complainant’s JBL mark, with the addition of “oken,” “oaen,” “uen,” and “us” and merely adds “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s JBL mark and is not commonly known by the disputed domain names. See Amend. Compl. Ex. I. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain names to offer competing or counterfeit goods for sale. See Amend. Compl. Ex. H.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith registration as it has a history of past adverse UDRP decisions. See Amend. Compl. Ex. O. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain names where Respondent uses the disputed domain names to offer competing or counterfeit goods for sale. See Amend. Compl. Ex. H. Finally, Respondent had actual knowledge of Complainant’s JBL mark prior to registering the disputed domain names.
B. Respondent
Respondent did not submit a Response.
1. Respondent registered the <jbloken.com>, <jbloaen.com>, <jbluen.com>, and <jblus.com> domain names on November 27, 2018, November 28, 2018, November 13, 2018, and October 10, 2018 respectively.
2. Complainant has established rights in the JBL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 782,327, registered Dec. 29, 1964).
3. Respondent attempts to attract, for commercial gain, users to the websites associated with the disputed domain names where Respondent uses them to offer competing or counterfeit goods for sale.
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”).
Complainant asserts rights in the JBL mark based upon registration with the USPTO (e.g. Reg. No. 782,327 registered December 29, 1964). See Amend. Compl. Ex. E. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds Complainant has rights in the JBL mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s disputed domain names are identical or confusingly similar to Complainant’s mark as they wholly incorporate the JBL mark with the addition of “oken,” “oaen,” “uen,” and “us” and merely adds “.com” gTLD. Confusing similarity is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law; furthermore the addition of generic or descriptive terms and a gTLD to a complainant’s mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law). Therefore, the Panel agrees with Complainant and finds Respondent’s disputed domain names to be identical or confusingly similar to the Complainant’s JBL mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names and is not authorized by Complainant to use the JBL mark. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). Complainant provides WHOIS information for Respondent indicating that Respondent is known as “Joyce Cheadle / Chen Jia Jin” and no information of the record indicates that Respondent was authorized to use the Complainant’s JBL mark. See Amend. Compl. Ex. I. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
Respondent lacks rights or legitimate interests in the disputed domain names because Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use when Respondent uses the disputed domain names to offer competing or counterfeit goods for sale. See Amend. Compl. Ex. H. Use of a disputed domain to sell competing or counterfeit goods is not evidence of a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)). Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and uses the disputed domain names in bad faith because Respondent has engaged in a pattern of bad faith registrations. See Amend. Compl. Ex. O. Evidence that respondent owned various domain names infringing on famous third-party marks and previous adverse UDRP decisions, as well as multiple domains in the current matter, can evince bad faith registration under Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions); see also NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Here, Respondent has other domain names infringing on other third-party marks resulting in adverse UDRP decisions, as well as several disputed domain names in this matter. See Amend. Compl. Exs. N and O . Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith registrations per Policy ¶ 4(b)(ii).
Next, Complainant argues Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent uses the disputed domain names to offer competing or counterfeit goods for sale. See Amend. Compl. Ex. H. Use of a disputed domain name to reference a complainant’s products and offer competitive or counterfeit products is evidence of bad faith registration and use. See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant asserts that Respondent had actual and/or knowledge of Complainant’s rights in the JBL mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the disputed domain names and Respondent’s use of the mark on the resolving web pages. See Amend. Compl. Ex. H. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). As the Panel agrees, it infers that Respondent had actual knowledge of Complainant’s rights in the JBL mark under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jbloken.com>, <jbloaen.com>, <jbluen.com>, and <jblus.com> domain names be TRANSFERRED from Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: June 24, 2019
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