Maplebear Inc. DBA Instacart v. lin xian he
Claim Number: FA2011001921923
Complainant is Maplebear Inc. DBA Instacart (“Complainant”), represented by Candice E. Kim of Greenberg Traurig LLP, United States. Respondent is lin xian he (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instacart.top>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 November 25, 2020; the Forum received payment on November 24, 2020.
On November 27, 2020, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <instacart.top> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 December 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@instacart.top. Also on December 7, 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 December 30, 2020, 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.
LANGUAGE OF THE PROCEEDINGS
Complainant has submitted that because Respondent presumably has knowledge of the English language the proceeding should be conducted in English. Under UDRP Rule 11(a) the Panel has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. The Panel notes that the resolving page at the disputed domain includes English text. 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). The Panel therefore determines the appropriate language of the proceedings to be English despite the Chinese registration agreement.
A. Complainant
Complainant made the following contentions.
Complainant, Maplebear Inc. DBA Instacart, operates an Internet-based delivery and pick-up service. Complainant has rights in the INSTACART mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,903,628, registered Feb. 23, 2016). See Amend. Compl. Ex. 10. Respondent’s <instacart.top> domain name is confusingly similar to Complainant’s mark because it entirely incorporates Complainant’s INSTACART mark and simply adds the “top” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <instacart.top> domain name. Complainant has not authorized Respondent to use the INSTACART mark and Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent passively holds the disputed domain name and offers it for sale.
Respondent registered and uses the <instacart.top> domain name in bad faith. Respondent offers the disputed domain name for sale. Additionally, Respondent makes no active use of the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s rights in the INSTACART mark based upon the reputation of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates an Internet-based delivery and pick-up service.
2. Complainant has established its trademark rights in the INSTACART mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,903,628, registered Feb. 23, 2016).
3. Respondent registered the disputed domain name on September 17, 2020.
4. Respondent has passively held the disputed domain name and offers it 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”).
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 INSTACART mark based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the 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).”). Complainant provides evidence of registration of the INSTACART mark with the USPTO (e.g., Reg. No. 4,903,628, registered Feb. 23, 2016). See Amend. Compl. Ex. 10. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the INSTACART mark. Respondent’s <instacart.top> domain name is confusingly similar to Complainant’s mark because it entirely incorporates Complainant’s INSTACART mark and simply adds the “top” gTLD. Addition of a gTLD is irrelevant in determining confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). The Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to the INSTACART mark under Policy ¶ 4(a)(i).
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 INSTACART trademark and to use it in its domain name;
(b) Respondent registered the disputed domain name on September 17, 2020;
(c) Respondent has passively held the disputed domain name and offers it for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits Respondent does not have rights or legitimate interests in the <instacart.top> domain name because Complainant has not authorized Respondent to use the INSTACART mark and Respondent is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Lin Xian He” as the registrant and no information suggests that Complainant has authorized Respondent to use the INSTACART mark in any way. See Amend. Compl. Ex. 18. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <instacart.top> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use but rather passively holds the disputed domain name and offers it for sale. Inactively holding a disputed domain name is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Additionally, an offer to sell a disputed domain name is not indicative of rights and legitimate interests per Policy ¶ 4(c)(i) or (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of the page resolving at the disputed domain name which simply displays a welcome message and a general statement that the domain name is for sale. See Amend. Compl. Ex. 17. Therefore, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or 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.
First, Complainant submits that Respondent registered and uses the <instacart.top> domain name in bad faith based upon Respondent’s offer to sell the disputed domain name. A general offer to sell a disputed domain name may evidence bad faith per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot of the parked webpage at the disputed domain with the message “the domain is for sale!” See Amend. Compl. Ex. 17. Thus, the Panel agrees with Complainant and finds bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent registered and uses the <instacart.top> domain name in bad faith because Respondent makes no active use of the disputed domain name. Failure to use an identical or confusingly similar domain name actively may be used to show bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the parked page resolving at the disputed domain name. See Amend. Compl. Ex. 17. Complainant argues that the disputed domain name creates a likelihood of confusion with the INSTACART mark and Complainant should not have to wait and see if Respondent capitalizes on that confusion. As the Panel agrees with Complainant, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the INSTACART mark based upon the reputation of the mark. Actual knowledge of rights in a mark is evidence of bad faith per Policy ¶ 4(a)(iii) and can be shown by the fame or notoriety of the mark. 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).”). Complainant argues that Respondent’s knowledge is evident from the reputation of the INSTACART mark. As the Panel agrees that actual knowledge is apparent, it finds bad faith per Policy ¶ 4(a)(iii).
Fourthly, 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 INSTACART mark and in view of the conduct that Respondent has engaged in, 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 <instacart.top> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 31, 2020
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