Del Monte Foods, Inc. v. Zhi Chao Yang
Claim Number: FA2203001987485
Complainant is Del Monte Foods, Inc. (“Complainant”), represented by Hara K. Jacobs of Ballard Spahr, LLP, Minnesota, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegenn.com>, registered with Cloud Yuqu LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2022; the Forum received payment on March 9, 2022.
On March 9, 2022, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <collegenn.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 March 11, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 31, 2022 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@collegenn.com. Also on March 11, 2022, 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 April 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
PANEL NOTE: SUPPORTED LANGUAGE REQUEST
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant is one of the largest and best-known food and beverage companies in the United States. Complainant has rights in the COLLEGE INN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 557,830, registered April 22, 1952). Respondent’s <collegenn.com> domain name is confusingly similar to Complainant’s COLLEGE INN mark. Respondent incorporates the mark in its entirety and omits the letter “i” while adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <collegenn.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the COLLEGE INN mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that displays third-party links including some that compete with Complainant’s business.
Respondent registered and used the <collegenn.com> domain name in bad faith as Respondent’s domain name resolves to a webpage that provides third-party links including some that compete with Complainant’s business. Respondent engages in the practice of typosquatting by omitting a letter from Complainant’s COLLEGE INN mark. Respondent had actual knowledge of Complainant’s rights in the COLLEGE INN mark due to the longstanding use and fame of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Del Monte Foods, Inc. (“Complainant”), of Walnut Creek, CA, USA. Complainant is the owner of numerous domestic and international registrations for the mark COLLEGE INN, which it has used continuously since at least as early as 1952 in connection with its production and distribution of canned chicken broth and stock.
Respondent is Zhi Chao Yang (“Respondent”), of Anhui, China. Respondent’s registrar’s address is listed as Mianyang, China. The Panel notes that Respondent registered the <collegenn.com> domain name on or about January 5, 2022.
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”).
Complainant claims to have rights in the COLLEGE INN mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the COLLEGE INN mark (e.g., Reg. No. 557,830, registered April 22, 1952). The Panel here finds Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <collegenn.com> domain name is confusingly similar to Complainant’s COLLEGE INN mark. Registration of a domain name that contains a mark in its entirety and removes a single letter and adds a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually, and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Complainant argues that Respondent incorporates the mark in its entirety and omits the letter “i” while adding the “.com” gTLD. The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <collegenn.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the COLLEGE INN mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). In the instant case the WHOIS information for the disputed domain name lists the registrant as “Zhi Chao Yang” and there is no other evidence indicating that Respondent was authorized to use the COLLEGE INN mark or was commonly known by the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that displays third-party links including some that compete with Complainant’s business. Use of a disputed domain name that resolves to a webpage that offers third-party links including those competing with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided the Panel with a screenshot of Respondent’s <collegenn.com> domain name that shows links to services and products that compete with Complainant’s COLLEGE INN mark. The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and used the <collegenn.com> domain name in bad faith as Respondent’s domain name resolves to a webpage that provides third-party links including some that compete with Complainant’s business. Registration of a domain name that resolves to a webpage that offers links to third parties including those competing with a complainant’s business may be evidence of bad faith per Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <collegenn.com> domain name that shows links to services and products that compete with Complainant’s COLLEGE INN mark. The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent engages in the practice of typosquatting by omitting a letter from Complainant’s COLLEGE INN mark. Typosquatting is the practice of incorporating a complainant’s mark and making small typographical changes which may be evidence of bad faith per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Here, Complainant argues that Respondent makes use of its COLLEGE INN removing the letter “i.” The Panel here finds that Respondent engaged in the practice of typosquatting which is evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the COLLEGE INN mark at the time of registering the <collegenn.com> domain name. The Panel may choose to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel here finds that Respondent did have actual knowledge of Complainant’s right in its mark, which further supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <collegenn.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 22, 2022
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