Penta Media, LLC v. Zayar Linn Thant / D4B / Whois Privacy Corp. / Myanmar Web Designer (MWD) Co., Ltd.
Claim Number: FA2108001958149
Complainant is Penta Media, LLC (“Complainant”), New York, USA. Respondent is Zayar Linn Thant / D4B / Whois Privacy Corp. / Myanmar Web Designer (MWD) Co., Ltd. (“Respondent”), Myanmar.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <biomanixupdate.com>, <biomanix-new-update.com>, and <biomanixsale.com>, registered with CloudFlare, Inc., Internet Domain Service BS Corp, and NameCheap, Inc.
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 August 4, 2021; the Forum received payment on August 4, 2021.
On August 4, 2021 and August 05, 2021, CloudFlare, Inc., Internet Domain Service BS Corp, and NameCheap, Inc. confirmed by e-mail to the Forum that the <biomanixupdate.com>, <biomanix-new-update.com>, and <biomanixsale.com> domain names are registered with CloudFlare, Inc., Internet Domain Service BS Corp, and NameCheap, Inc. and that Respondent is the current registrant of the names. CloudFlare, Inc., Internet Domain Service BS Corp, and NameCheap, Inc. have verified that Respondent is bound by the CloudFlare, Inc., Internet Domain Service BS Corp, and NameCheap, Inc. registration agreements 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 August 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@biomanixupdate.com, postmaster@biomanix-new-update.com, postmaster@biomanixsale.com. Also on August 11, 2021, 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 September 7, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides 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 domain names here are registered to different holders. Complainant does not address that fact and so the Panel is empowered to order re-commencement of the proceedings. However, for the reasons which follow, the Complaint fails and the Panel finds it unnecessary to consider further this procedural matter.
A. Complainant
The Panel has quoted directly from the Complaint, as follows:
The infringing domains use our exact trademark (Biomanix) in the domain names, and are using these domains to sell counterfeit versions of our product called “Biomanix.” They are intentionally using our trademark, Biomanix, in their domain names to trick consumers into thinking their counterfeit versions of Biomanix are the original product.
Respondent(s) have no rights or legitimate interests in owning the aforementioned domains using our trademark “Biomanix.” These domains were registered purely to sell counterfeit versions of our product called “Biomanix.”
The domain names were registered in bad faith. The only reason they were registered was to sell counterfeit versions of our product called “Biomanix.” They are using our trademark “Biomanix” to mislead consumers into thinking the domains are the legitimate websites to purchase original versions of Biomanix.
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 owns United States Patent and Trademark Office (“USPTO”) Reg. No. 5,140,301, registered Feb. 14, 2017, for BIOMANIX;
2. the domain names were registered on the following dates: <biomanixupdate.com> on January 15, 2020; <biomanix-new-update.com> on February 10, 2020 and <biomanixsale.com> on December 5, 2016.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.[i]
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.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Complainant provides evidence of a USPTO registration for the trademark and so the Panel finds that Complainant has rights in the trademark.
The domain names take the trademark and add non-distinctive matter in the form of the gTLD, “.com”, together with the descriptive words, “update”, “new” or “sale”. None of those additions to the trademark are of any distinctive value and the Panel finds the disputed domain names to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy.[iii]
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 names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv] That said, the Panel notes that Complainant does not provide any evidence at all regarding the content of the disputed domain names. Accordingly, the Panel finds that Complainant has not made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
It follows that the Complaint fails to establish one of the three elements of the Policy. Whilst not necessary, the Panel has gone on to show that, through want of this requisite evidence, Complainant has also failed to establish the third element.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Guidance 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 no evidence to support any of those four scenarios, nor of registration or use in bad faith as separate matters[v]. The Panel finds that Complainant has failed to satisfy the third element of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <biomanixupdate.com>, <biomanix-new-update.com> and <biomanixsale.com> domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Date: September 9, 2021
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding.
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