Oboleo Ltd. v. Cary Yuan
Claim Number: FA2012001926211
Complainant is Oboleo Ltd. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is Cary Yuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <secretbenefit.net>, which is registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2020; the Forum received payment on December 23, 2020.
On December 24, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <secretbenefit.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.
GoDaddy.com, LLC has likewise verified that Respondent is bound by the GoDaddy.com, 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”).
On December 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2021 by which Respondent could file a Response to the Complaint, via e-mail addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, as well as to the attention of postmaster@secretbenefit.net. Also, on December 29, 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 January 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner and operator of an online dating website, which has been in continuous operation at the website denominated <secretbenefits.com> since March 15, 2016.
Complainant holds a registration for the SECRET BENEFITS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,958,569, registered January 14, 2020, on the basis of an application filed March 15, 2018.
Complainant has made substantial efforts to promote the SECRET BENEFITS mark, including via sponsored articles in online publications, which efforts have built Complainant’s reputation in the online dating marketplace.
As a consequence, Complainant has acquired rights in the SECRET BENEFITS mark under the common law.
Respondent registered the domain name <secretbenefit.net> on July 20, 2019.
The domain name is confusingly similar to Complainant’s SECRET BENEFITS mark.
Complainant has not licensed or otherwise authorized Respondent to use the SECRET BENEFITS mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant online by means of a resolving website purporting to offer memberships in an online dating service that competes with the business of Complainant.
Respondent does not have either rights to or legitimate interests in the domain name.
Respondent has registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 SECRET BENEFITS service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
We are mindful that Respondent registered its <secretbenefit.net> domain name on July 20, 2019, which was prior to the effective date of Complainant’s service mark registration for the SECRET BENEFITS service mark, January 14, 2020. However, it is well-established under the Policy that the relevant date for setting Complainant’s rights in its mark is the date of filing of its application for registration, which occurred on March 15, 2018, and thus before Respondent’s domain name registration. Thus Complainant’s rights in its mark are senior in time to those of Respondent in its domain name, and Complainant’s standing to proceed under Policy ¶ 4(a)(i) is secure. See, for example, Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum January 16, 2015) (finding that a UDRP complainant had rights in a mark dating back to its February 20, 2003, filing date with the USPTO where the trademark application was ultimately successful). See also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that a UDRP complainant’s rights in a trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate respondent’s registration).
Complainant also asserts common law rights in the SECRET BENEFITS mark through continuous use of the mark since 2016. However, in light of our findings on the point of its USPTO mark registration, it is unnecessary for us to examine that claim.
Turning, then, to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <secretbenefit.net> domain name is confusingly similar to Complainant’s SECRET BENEFITS service mark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms and the letter “s” at the end of the mark, plus the addition of the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
As to Respondent’s deletion of the space between the terms of Complainant’s SECRET BENEFITS mark in creating the domain name, this alteration of the mark is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces.
And, as to Respondent’s inclusion of a gTLD in the domain name, see, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, see ShipCarsNow, Inc. v Wet Web Design LLC, FA 1601260 (Forum February 26, 2015) (a panel there finding confusing similarity between the disputed <shipcarnow.com> domain name and the mark SHIPCARSNOW notwithstanding that the domain name eliminated the letter “s” from the middle of the mark).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed <secretbenefit.net> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Complainant has not licensed or otherwise authorized Respondent to use the SECRET BENEFITS mark. We also observe that there is nothing in the record before us suggesting that Respondent has been commonly known by the <secretbenefit.net> domain name. And we further note that the pertinent WHOIS information identifies the registrant of the domain name only as “Cary Yuan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next take notice of Complainant’s assertion, made without objection from Respondent, that Respondent uses the <secretbenefit.net> domain name to pass itself off as Complainant online by means of a resolving website purporting to offer memberships in an online dating service that competes with the business of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Coryn Group, Inc. v. Media Insight, FA 198959 (Forum December 5, 2003) (finding that a respondent did not employ contested domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website offering services competing with those marketed by a UDRP complainant under its marks).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged <secretbenefit.net> domain name to profit illicitly by passing itself off as Complainant online in order to offer purported memberships in an online dating service that competes with the business of Complainant. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, OneWest Bank N.A. v. Matthew Foglia, FA1611449 (Forum April 26, 2015) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which competed with the business of a UDRP complainant was evidence of that respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <secretbenefit.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 25, 2021
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