Bon Jovi Productions, Inc. v. wangjinzhu
Claim Number: FA1905001845428
Complainant is Bon Jovi Productions, Inc. (“Complainant”), represented by Philip Nulud of Buchalter, California, USA. Respondent is wangjinzhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bonjoviwine.com>, registered with Xin Net Technology Corporation.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2019; the Forum received payment on May 29, 2019.
On June 5, 2019, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <bonjoviwine.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 June 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@bonjoviwine.com. Also on June 11, 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 July 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
The Panel notes that the Registration Agreement is written in the Chinese language, thereby making the language of the proceedings in Chinese. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. Accordingly, the Panel may decide, per Rule 11, that because the Respondent signed an agreement in Chinese, the Complaint should be resubmitted in Chinese and the case recommenced. Alternatively, the Panel may decide to continue the case with the English-language submission of the Complaint. See Rule 11. 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 selected a domain name consisting of an English name and descriptive word. Complainant also argues that the resolving webpage features content in English. Therefore, Complainant submits and the Panel decides that Respondent is capable of understanding the English language and that the proceeding should be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant is a celebrity known internationally for its original rock music and appearances in movies, television and concerts. Complainant has rights in the BON JOVI mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,484,670, registered Apr. 12, 1988). See Compl. Annex 5. Respondent’s <bonjoviwine.com> domain name is identical or confusingly similar to Complainant’s BON JOVI mark because it wholly incorporates Complainant’s BON JOVI mark, and merely adds the descriptive term “wine” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <bonjoviwine.com> domain name. Respondent is not authorized to use Complainant’s BON JOVI mark and is not commonly known by the disputed domain name. See Compl. Annex 2. 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 the disputed domain name resolves to a website with third-party hyperlinks. See Compl. Annex 8.
Respondent registered and uses the <bonjoviwine.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent profits by hosting third-party hyperlinks. See Compl. Annex 8.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a band known internationally through its lead singer Jon Bon Jovi for its original rock music and appearances in movies, television and concerts.
2. Complainant has established its trademark rights in the BON JOVI mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,484,670, registered Apr. 12, 1988).
3. Respondent registered the disputed domain name on April 22, 2019.
4. Respondent has caused the disputed domain name to resolve to a website with third-party 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the BON JOVI mark based upon registration with the USPTO (e.g., Reg. No. 1,484,670, registered Apr. 12, 1988). See Compl. Annex 5. 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 BON JOVI mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BON JOVI mark. Complainant argues Respondent’s <bonjoviwine.com> domain name is identical or confusingly similar to Complainant’s BON JOVI mark because it wholly incorporates Complainant’s BON JOVI mark, and merely adds the descriptive term “wine” and the “.com” gTLD. 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 The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel agrees with Complainant and finds Respondent’s disputed domain name to be confusingly similar to the Complainant’s BON JOVI mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BON JOVI trademark and to use it in its domain name, adding merely adding the descriptive word “wine” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the disputed domain name on April 22, 2019;
(c) Respondent has caused the disputed domain name to resolve to a website with third-party hyperlinks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the <bonjoviwine.com> domain name. Respondent is not authorized to use Complainant’s BON JOVI mark and is not commonly known by the disputed domain name. See Compl. Annex 2. 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 “Wangjinzhu” and no information of the record indicates that Respondent was authorized to use the Complainant’s BON JOVI mark. See Compl. Annex 2. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues 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 the disputed domain name resolves to a website with third-party hyperlinks. See Compl. Annex 8. A respondent’s use of a disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant, does not evidence rights or legitimate interests in the domain name. See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Complainant provides the panel with a screenshot of the resolving webpage of the disputed domain name that displays third-party hyperlinks. See Compl. Ex. 8. 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).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant argues Respondent registered and uses the <bonjoviwine.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent profits by hosting third-party hyperlinks. See Compl. Annex 8. Bad faith registration has been found under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel recalls Complainant provides a screenshot of the resolving webpage of the disputed domain name that displays third-party hyperlinks. See Compl. Ex. 8.Thus the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BON JOVI mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bonjoviwine.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 4, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page