Fundbox, Ltd. v. Zhichao Yang
Claim Number: FA2010001915903
Complainant is Fundbox, Ltd. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <funbdox.com>, registered with Above.com Pty 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2020; the Forum received payment on October 5, 2020.
On October 6, 2020, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <funbdox.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 October 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2020 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@funbdox.com. Also on October 12, 2020, 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 November 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FUNDBOX mark. Respondent’s domain name is confusingly similar to Complainant’s FUNDBOX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <funbdox.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in the FUNDBOX mark based upon the registration with the USPTO (e.g., Reg. No. 4,871,222, registered Dec.15, 2015). Registration of a mark with the USPTO is a valid showing of rights in a mark per 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).”). The Complainant has provided satisfactory evidence that it has rights in the mark under Policy 4(a)(i).
Complinant argues Respondent’s <funbdox.com> domain name is virtually identical and confusingly similar to Complainant’s FUNDBOX mark as it contains the FUNDBOX mark in its entirety, merely transposing the letters “b” and “d,” and adding the “.com” gTLD. The transposition of letters and the addition of a gTLD fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.); See also RingCentral, Inc. v. Aug.ine Rivera, FA 1562126 (Forum July 1, 2014) (“Transposition of letters in [a] trademark does not distinguish the domain name.”). Therefore, the <funbdox.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <funbdox.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <funbdox.com> domain name since Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the FUNDBOX mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). 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 indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <funbdox.com> domain name lists the registrant as “Zhichao Yang,” and there is no other evidence to suggest that Respondent was authorized to use the FUNDBOX mark. Therefore, the Panel holds that Respondent is not commonly known by the <funbdox.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <funbdox.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name instead resolves to a page displaying links related to the goods and services associated with Complainant and its competitors. Where a respondent has used wrongfully the mark of a complainant to redirect users to competing services, panels have found that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither 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).”). Complainant has provided a screenshot of the <funbdox.com> domain name’s resolving webpage which contains links to third-party webpages offering financial services in competition with Complainant. Therefore, the Respondent fails to use the <funbdox.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <funbdox.com> domain name in bad faith because Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Complainant has provided evidence of Respondent’s history of UDRP proceedings which shows that Respondent has been named in multiple UDRP proceedings. Therefore, the Panel holds that Respondent registered and uses the <funbdox.com> domain name in bad faith per Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent registered and uses the <funbdox.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a domain name incorporating the mark of a complainant to redirect consumers to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant has provided a screenshot of the <funbdox.com> domain name’s resolving webpage which contains links to third-party webpages offering financial services in competition with Complainant. Therefore, Respondent registered and used the <funbdox.com> domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant also argues that Respondent engaged in typosquatting in bad faith. Typosquatting may act as independent evidence of bad faith under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant argues that Respondent’s transposition of letters in the FUNDBOX mark constitutes typosquatting. The Panel agrees and finds bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the FUNDBOX mark at the time of registering the <funbdox.com> domain name. To support this assertion, Complainant points to its trademark registrations as well as its commercial presence and reputation. Actual knowledge of Complainant's rights in the mark prior to registering the <funbdox.com> domain name can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Based on the evidence in the record, the Panel holds that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <funbdox.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 9, 2020
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