One Source to Market, LLC v. li si heng
Claim Number: FA2108001959167
Complainant is One Source to Market, LLC (“Complainant”), represented by Joshua D. Rievman of Dunning Rievman LLP, New York, USA. Respondent is li si heng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hexcladcookware.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 August 11, 2021; the Forum received payment on August 12, 2021. The Complaint was submitted in both Chinese and English.
On August 16, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <hexcladcookware.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 August 23, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of September 13, 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@hexcladcookware.com. Also on August 23, 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 September 20, 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.
A. Complainant
Complainant asserts trademark rights in HEXCLAD. Complainant holds a national registration for that 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 owns United States Patent and Trademark Office (“USPTO”) Reg. No. 5,111,350, registered December 27, 2016 for the trademark, HEXCLAD[i];
2. 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; and
3. the disputed domain name was registered on November 1, 2020.
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."
As a preliminary procedural matter, the Panel notes the Chinese language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, in response to a deficiency letter from the Forum, the Complaint has been filed in both Chinese and English thus satisfying Rule 11.
Moving on, 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.
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 HEXCLAD with the USPTO, a national trademark authority.
Complainant makes no submission as to whether the domain name is identical or confusingly similar to its trademark. Instead it states that “[t]he infringing domain name, hexcladcookware.com, illegally incorporates the entirety of Complainant’s trademark, ‘Hexclad’, and pairs it with the description of the product, ‘cookware’ …” from which the Panel deduces that what might have been asserted is confusing similarity.
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 merely adds the descriptive word, “cookware”, to the trademark. The Panel notes that the USPTO registration covers cookware generally. The Panel finds that the terms are confusingly similar[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 must 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 “Li Si Heng” which does not provide any indication that Respondent might be commonly known by the domain name. The Complaint then carries the following passages:
“Hexcladcookware.com is attempting to sell cookware using this url and the site incorporates OSTM’s trademark, logos and look and feel infringing bothe (sic) OSTM trademark and its exclusive distribution rights. The products are either unauthorize re-sales (sic) of OSTM’s products or are counterfeit.
…
Li Si Heng and is using (sic) Hexcladcookware.com to attempt to sell cookware and the site incorporates OSTM’s trademark, logos and look and feel infringing both OSTM trademark and its exclusive distribution rights. The products are either unauthorize re-sales of OSTM’s products or are counterfeit.”
Under the part of the Complaint entitled “OTHER LEGAL PROCEEDINGS” appears some further information:
“… Complaint attempted to submit a cease and desist letter through Alibaba which stated that it would not act on any letter and instructed counsel to submit through its trademark abuse site, which failed on multiple attempts to allow upload of the actionable information.”
In default proceedings such as these, the Panel is entitled to rely on reasonable assertions made in a complaint and draw inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, as stated above, Complainant must establish a prima facie case and here there is no evidence of the resolving website or of any other use of the disputed domain name. There is no copy of the cease and desist letter referred to and so nothing of potential assistance that Panel might extract from that letter. Indeed, the only annexure to the Complaint is an extract from the USPTO Register of the trademark (together with a Chinese language translation thereof).
In these circumstances the Panel finds that Complainant has not established a prima facie case in support of its assertion that Respondent lacks rights and legitimate interests under Policy[v] with the consequence that Complainant has failed to satisfy the second limb of the Policy.
No findings required[vi].
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hexcladcookware.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: September 22, 2021
[i] The Complaint quoted Regn. No. as 86966546, being the application serial number. Further, the trademark is registered as HexClad. Nothing is said of that in the Complaint but the Panel finds that this minor stylisation makes no different to the following analysis under the Policy.
[ii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[iii] See, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii).
[vi] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary.
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