Spectrum Brands, Inc. v. huang zhenyu / SERVICIOS WEB YURY LLORCA DE LA NOVAL E.I.R.L / Yury Llorca
Claim Number: FA2011001921478
Complainant is Spectrum Brands, Inc. ("Complainant"), represented by William Schultz of Merchant & Gould, P.C., United States. Respondents are huang zhenyu, China, and SERVICIOS WEB YURY LLORCA DE LA NOVAL E.I.R.L / Yury Llorca, Chile ("Respondents").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <smartcode.design>, registered with Chengdu West Dimension Digital Technology Co., Ltd., and <smartcode.cloud>, registered with eNom, 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 the Forum electronically on November 20, 2020; the Forum received payment on November 20, 2020.
On November 23, 2020, eNom, LLC confirmed by email to the Forum that the <smartcode.cloud> domain name is registered with eNom, LLC and that Respondent SERVICIOS WEB YURY LLORCA DE LA NOVAL E.I.R.L / Yury Llorca is the current registrant of the name. ENom, LLC has verified that this Respondent is bound by the eNom, 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").
A corresponding verification was received from Chengdu West Dimension Digital Technology Co., Ltd., on November 24, 2020, with regard to the domain name <smartcode.design> and Respondent huang zhenyu.
The language of the eNom, LLC registration agreement is English. The language of the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement is Chinese.
On November 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Chinese, setting a deadline of December 15, 2020 by which Respondents could file a Response to the Complaint, via email to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts, and to postmaster@smartcode.cloud and postmaster@smartcode.design. Also on November 25, 2020, the Written Notice of the Complaint in English and Chinese, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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[s]" 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 Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant has alleged that the disputed domain names in this proceeding are effectively controlled by the same person or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a
that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions sets forth factors that are normally considered when a complainant is filed against multiple respondents:
[P]anels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.11 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
The disputed domain names were registered on consecutive days, and both correspond to Complainant's SMARTCODE mark, with different top-level domains appended thereto. But that appears to be all that they have in common. The domain name <smartcode.cloud> was registered by an individual or entity in Chile, through the registrar eNom, LLC; it resolves to a page consisting of what the Panel presumes to be pay-per-click links. The domain name <smartcode.design> was registered by an individual in China through a Chinese registrar, and it does not resolve to a website. There are no other evident similarities between the two domain names as to registration data, nameservers, or other information, and Complainant has offered no other evidence tending to show that they are under common control.
Complainant contends that the two domain names should be treated as being registered by the same domain name holder on the grounds that both correspond to Complainant's mark and they were registered within two days of one another. Complainant also requests that the proceeding should be conducted in English, notwithstanding that the registration agreement for <smartcode.design> is in Chinese, on the basis that "all of the activity conducted by the registrant has been in English." In support thereof, Complainant notes (correctly) that the domain name is composed of English words, and states that "the website and warning page Respondent set up related to the Domain Names is written in English." However, it appears that the language in which the website at <smartcode.cloud> is rendered depends upon the user's location or language settings, while the "warning page" that Complainant refers to is simply a browser-generated error message indicating that the domain name does not resolve to an IP address.
The Panel concludes that there is an insufficient basis to determine that the domain names are under common control, and that it is therefore inappropriate under Paragraph 3(c) of the Rules to include both of them in a single proceeding under the Policy. The Panel therefore dismisses without prejudice the Complaint with respect to the disputed domain name <smartcode.design> and Respondent huang zhenyu, and accordingly need not further address the language issue.
A. Complainant
Complainant is a global, diversified consumer products company and a leading supplier of residential locksets and other products, with over 12,500 employees worldwide. Complainant has used SMARTCODE and related marks in connection with locking systems since 2007 or 2008. Complainant owns registrations for SMARTCODE as a standard character mark in India and Costa Rica, and also asserts common law trademark rights in SMARTCODE. In addition, Complainant owns registrations in the United States and several other jurisdictions for SMART CODE 123, a design mark consisting of the words "SMART CODE" separated by an oval containing buttons labeled with a padlock and the numbers 1, 2, and 3. (At least one but not all of these design mark registrations include a disclaimer of exclusive rights in the words "SMART" and "CODE" apart from the design mark.)
Respondent SERVICIOS WEB YURY LLORCA DE LA NOVAL E.I.R.L / Yury Llorca ("Respondent") registered the disputed domain name <smartcode.cloud> in November 2020. The domain name resolves to a parking page consisting of pay-per-click links, most of which relate to direct competitors of Complainant. Complainant states that it has not authorized or licensed Respondent to use its marks, and that Respondent is not commonly known by the domain name.
Complainant contends on the above grounds that the disputed domain name <smartcode.cloud> is identical or confusingly similar to its SMARTCODE 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 <smartcode.cloud> is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and 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, supra, § 4.3; 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 <smartcode.cloud> corresponds to Complainant's registered SMARTCODE mark and to the predominant element of its registered SMART CODE 123 design mark, with the ".cloud" top-level domain appended thereto. The top-level domain is generally disregarded for purposes of paragraph 4(a)(i) of the Policy, and correspondence to the predominant element of a design mark is normally sufficient. See, e.g., Jacobs Global Kft v. Michele Del Monaco, No. 103146 (Czech Arb. Ct. Aug. 19, 2020) (finding <crystalnails.cloud> confusingly similar to figurative mark CN CRYSTAL NAILS); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.10 (noting that a domain name is normally compared to the textual components of the mark, unless they are entirely disclaimed or are overtaken in prominence by design elements). The Panel considers the disputed domain name <smartcode.cloud> 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 <smartcode.cloud> incorporates Complainant's registered mark without authorization, and it is being used for the sole apparent purpose of displaying pay-per-click links, mostly to direct competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Wynn Resorts Holdings, LLC v. Philippe Hugot, FA 1915901 (Forum Nov. 5, 2020) (finding lack of rights or interests in similar circumstances); Mediacom Communications Corp. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1913479 (Forum Oct. 23, 2020) (same).
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)(iii) of the Policy, 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."
Respondent registered a domain name corresponding to Complainant's mark and is using it for a website that displays pay-per-click links, mostly to direct competitors of Complainant. The Panel infers from the content of Respondent's website that Respondent was aware of and intentionally targeted Complainant and its mark when registering the domain name. Respondent's conduct is indicative of bad faith registration and use under the Policy. See, e.g., Wynn Resorts Holdings, LLC v. Philippe Hugot, FA 1915901 (Forum Nov. 5, 2020) (finding bad faith in similar circumstances). The Panel so finds.
The Complaint is DISMISSED without prejudice with respect to the domain name <smartcode.design> and Respondent huang zhenyu.
With regard to the domain name <smartcode.cloud> and Respondent SERVICIOS WEB YURY LLORCA DE LA NOVAL E.I.R.L / Yury Llorca, having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smartcode.cloud> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 30, 2020
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