Spectrum Brands, Inc. v. Yong Lin
Claim Number: FA2101001928926
Complainant is Spectrum Brands, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Yong Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartcode.design>, registered with Chengdu West Dimension Digital Technology Co., 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2021; the Forum received payment on January 19, 2021.
On January 20, 2021, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <smartcode.design> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 January 22, 2021, the Forum served the Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of February 11, 2021 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@smartcode.design. Also on January 22, 2021, the Chinese 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 February 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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: SUPPORTED LANGUAGE REQUEST
The relevant Registration Agreement for the at-issue domain is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel may find that there is a likely possibility that the Respondent may be conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant, while conducting the proceeding in English would not unfairly burden Respondent. In the instant case, Complainant avers that all of the activity conducted by the registrant has been in English. Furthermore, Respondent, after proper notice of this proceeding in the Chinese language, failed to object to Complainant’s request that the proceeding move forward in English. Therefore, Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant contends as follows:
Complainant manufactures and sells consumer locks.
Complainant has rights in the SMARTCODE mark through its registrations with numerous trademark agencies, including the Mexican Institute of Industrial Property (“MIIP”).
Respondent’s <smartcode.design> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.design” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <smartcode.design> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its SMARTCODE mark in the disputed domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the at-issue domain name.
Respondent registered and uses the <smartcode.design> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by diverting internet users to an expired webpage. Further, Complainant registered the disputed domain name with actual knowledge of Complainant’s rights in the SMARTCODE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in SMARTCODE.
Respondent is not affiliated with Complainant and is not authorized to use the SMARTCODE mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in SMARTCODE.
Respondent holds the <smartcode.design> domain name passively.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the SMARTCODE mark through its registration with numerous trademark agencies, including the MIIP. Registration with one or more recognized trademark agencies is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”).
Respondent’s <smartcode.design> domain name is composed of Complainant’s SMARTCODE trademark followed by a paragraph 4(a)(i) irrelevant generic top-level domain name, here “.design”. The slight difference between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark under the Policy. Therefore, the Panel concludes that Respondent’s <smartcode.design> domain name is confusingly similar to Complainant’s SMARTCODE trademark pursuant to Policy ¶ 4(a)(i). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017) (“Appending a top-level domain that describes a complainant’s business adds to confusing similarity.”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Yong Lin” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <smartcode.design> domain name. The Panel therefore concludes that Respondent is not commonly known by the <smartcode.design> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent holds the confusingly similar <smartcode.design> domain name passively. Browsing to the at-issue domain name returns an error message lacking substantive content. Respondent’s passive holding of <smartcode.design> is indicative of neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent holds the confusingly similar <smartcode.design> domain passively; browsing to the domain name returns an error message. Respondent’s passive holding of the at-issue domain name disrupts Complainant’s business as it diverts internet traffic to an inactive website giving internet users the impression that the Complainant is closed or out of business. Using the domain name in this manner demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).); see also 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, Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the SMARTCODE mark when it registered <smartcode.design> as a domain name. Respondent’s actual knowledge is inferred from Respondent’s registration of Complainant’s entire mark in the at-issue domain name and from the lack of any legitimate use for registering the domain name. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name further demonstrates Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smartcode.design> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 18, 2021
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