ecobee, Inc. v. zhou lei
Claim Number: FA2106001951424
Complainant is ecobee, Inc. (“Complainant”), represented by Morgan T. Nickerson of K&L Gates LLP, Massachusetts, USA. Respondent is zhou lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecobeesmartthermostat.com>, registered with Alibaba Cloud Computing (Beijing) 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2021; the Forum received payment on June 17, 2021. The Complaint was received in English.
On June 18, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <ecobeesmartthermostat.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) 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 June 22, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 12, 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@ecobeesmartthermostat.com. Also on June 22, 2021, the Chinese and English language 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 July 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Panel notes the Chinese language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant submits that Respondent is capable of understanding English based on the fact that the resolving website consists of English language text largely taken from Complainant’s own website, which has been amended in ways showing an understanding of English.
In the circumstances the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in ECOBEE SMART THERMOSTAT. Complainant holds a national registration for that trademark. Complainant submits that the domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells smart thermostats and remote sensors by reference to the trademark, ECOBEE SMART THERMOSTAT, regsitered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 4,212,997 from September 25, 2012;
2. the disputed domain name was registered on October 10, 2020 and resolves to a website which mimics Complainant’s own website, and which carries links to purchase Complainant’s own goods through third-party Internet marketplaces; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademark, register any domain name incorporating its trademark, or sell its products.
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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark, the gTLD “.com” can be disregarded as trivial. Thereafter, the disputed domain name is identical to the trademark and the Panel finds that they are identical for the purposes of this aspect of the Policy[iii].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The name of the underlying domain name holder, as disclosed by the Registrar, is “Zhou Lei” which does not provide any indication that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
Complainant provides evidence that the resolving website slavishly copies Complainant’s official website using much of its text, product descriptions, product images and differing from the official website principally by way of redirecting potential purchasers of Complainant’s goods to one or other third-party Internet marketplaces where those genuine goods are for sale. Under the Policy this type of activity is not generally considered a bona fide offering of goods or services or legitimate noncommercial or fair use and so the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name[v].
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be legally identical to the trademark. Confusion is therefore inevitable. The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of that website by implying to internet users that they will reach Complainant’s website.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ecobeesmartthermostat.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 15, 2021
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[iii] See, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] Furthermore, the matter is put beyond doubt by the fact that the resolving website uses Complainant’s trademark and logo versions thereof without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods: see, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) finding no bona fide offering of goods or legitimate noncommercial or fair use existed where respondent used the resolving website to sell products branded with complainant’s MERRELL mark, which were either counterfeit products or legitimate products of complainant being resold without authorization.
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