Free Speech Media, LLC v. xuhui zhang
Claim Number: FA1006001330292
Complainant is Free
Speech Media, LLC (“Complainant”), represented by Jennifer Daniel Collins, of
Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <fstv.net>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2010. The Complaint was submitted in both Chinese and English.
On August 2, 2010, Beijing Innovative Linkage Technology Ltd. DBA dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <fstv.net> domain name is registered with Beijing Innovative Linkage Technology Ltd. DBA dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. DBA dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. DBA dns.com.cn registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 5, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 25, 2010 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@fstv.net by e-mail. Also on August 5, 2010, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fstv.net> domain name is identical to Complainant’s FSTV mark.
2. Respondent does not have any rights or legitimate interests in the <fstv.net> domain name.
3. Respondent registered and used the <fstv.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Free Speech Media, LLC, holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FSTV mark (e.g., Reg. No. 2,069,038 issued June 10, 1997). FSTV is an independent, publicly-supported, non-profit TV multi-platform digital media company.
Respondent, xuhui zhang, registered the <fstv.net> domain name on July 2, 1999. The disputed domain name does not resolve to an active website.
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."
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(e), 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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); see also 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.”).
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.
Complainant asserts rights in the FSTV mark through its
registrations of the mark with the USPTO (e.g.,
Reg. No. 2,069,038 issued June 10, 1997).
The Panel finds these trademark registrations sufficiently prove
Complainant’s rights in the FSTV mark under Policy ¶ 4(a)(i).
Complainant contends Respondent’s <fstv.net>
domain name is identical to its FSTV mark.
Respondent replicates Complainant’s mark in the disputed domain name and
then merely attaches the generic top-level domain (“gTLD”) “.net” to the
mark. The Panel finds the addition of a
gTLD is irrelevant in determining whether a domain name is identical to a mark
under Policy ¶ 4(a)(i). See
Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000)
(finding that the domain name <toshiba.net> is identical to the
complainant’s trademark TOSHIBA); see
also Katadyn N. Am. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <fstv.net> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel views Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant asserts Respondent is not its licensee. In addition, the WHOIS information lists “xuhui zhang” as the registrant of the disputed domain name, which the Panel finds is not similar to the <fstv.net> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant has shown that Respondent’s <fstv.net> domain name does not resolve to an active website. A screen shot shows the disputed domain name resolves to a Google search. Accordingly, the Panel finds Respondent has failed to make active use of the disputed domain name. Therefore, the Panel concludes Respondent does not use the <fstv.net> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Prior panels have found failure to make active use of a
domain name can constitute bad faith use when the domain name registration
occurred after the complainant acquired rights in a mark. See
Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010)
(finding bad faith use where respondent passively held the domain name and the
domain name registration occurred approximately 19 years after the complainant
had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA
1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where
respondent failed to make active use of the disputed domain name and the respondent
registered the domain name approximately 7 years after the complainant
registered its trademark with the USPTO).
In this case, Respondent registered its identical domain name
approximately two years after Complainant acquired rights in the FSTV mark
through its registration of the mark with the USPTO. Therefore,
the Panel finds Respondent’s failure to make active use of the disputed domain
name constitutes bad faith registration
and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fstv.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 9, 2010
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