The RCS Network v. YangZhiChao
Claim Number: FA2205001996196
Complainant is The RCS Network (“Complainant”), represented by Jonathan Loeb of Rich May, P.C., Massachusetts, USA. Respondent is YangZhiChao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maassave.com>, registered with 22Net, Inc.; 22net, 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 May 13, 2022; the Forum received payment on May 13, 2022. The Complainant was received in both Chinese and English.
On May 15, 2022, 22Net, Inc.; 22net, Inc. confirmed by e-mail to the Forum that the <maassave.com> domain name is registered with 22Net, Inc.; 22net, Inc. and that Respondent is the current registrant of the name. 22Net, Inc.; 22net, Inc. has verified that Respondent is bound by the 22Net, Inc.; 22net, Inc. 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 May 18, 2022, the Forum served the Chinese language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 7, 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@maassave.com. Also on May 18, 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 May 26, 2022, 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Further, that the Complainant was received in both Chinese and English. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant asserts trademark rights in MASS SAVE. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the 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 is an unincorporated collaborative association of utility companies and energy providers. It promotes utility and energy services by reference to the trademark, MASS SAVE;
2. the trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,136,287, registered on August 29, 2006;
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark; and
4. the disputed domain name was registered on March 14, 2022 and resolves to a webpage carrying links to Complainant’s business, plus another energy related link (“Mass Save Rebates”, “Mass Save Program” and “Energy Conservation”).
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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”)).
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 (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark MASS SAVE with the USPTO, a national trademark authority.
Countless UDRP decision have held that in most cases the gTLD can be ignored for the purposes of comparison of a domain name with a trademark. Once the gTLD in this case, “.com”, is subtracted from the domain, what remains is a transparent permutation of the words “mass” and “save” which constitute the trademark - an additional letter “a” has been introduced and, in eliding the two words into a form which complies with domain name syntax, one letter “s” has been omitted, but the trademark remains recognizable. The Panel finds that the domain name is confusingly similar to the trademark (see, for example, Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) finding <twitcch.tv> confusingly similar to the TWITCH TV trademark; Brownstone Publishing, LLC, d/b/a Angie's List v. Above.com Domain Privacy, FA 1573469 (Forum Sept. 4, 2014) holding confusing similarity between <angieslit.com> and the ANGIE’S LIST trademark; Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015), stating that “[w]here a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”).
Complainant has therefore 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 domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
In consequence of these administrative proceedings, the Registrar disclosed the name of the domain name registrant as “YangZhiChao”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.
The evidence in support of the Complaint shows that the domain name resolves to a webpage showing three hyperlinks, two to Complainant and another generic link related to energy conservation. The Panel considers it likely those links were added by the Register but it is well established under the Policy that a respondent remains liable for any such material. Further, it is likely that the links benefit Respondent financially by way of referral fees.
Under the Policy, such use does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use (see, for example, Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites; see also Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”)). Similar findings have been made even when the link is back to Complainant’s own website on the reasoning that Complainant has no control over the (mis)use of the domain name.
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the domain name and so the onus shifts to Respondent. Absent a Response, that onus is not met and so the Panel finds that Complainant has met 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.
Paragraph 4(b) of the Policy sets out four circumstances which are to be taken as evidence of the registration and use of a domain name in bad faith. The Panel finds that paragraph 4(b)(iv) has application. It states:
(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 has already found the domain name to be confusingly similar to the trademark. The use on the domain name is in all likelihood for commercial gain, as explained. The Panel finds that Respondent targeted Complainant’s trademark and business and so finds registration and use in bad faith (see, for example, Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that <maassave.com> be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 20, 2022
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