Tony Ashtiani v. Quantum Web Designers
Claim Number: FA1109001408847
Complainant is Tony Ashtiani (“Complainant”), represented by Eric Menhart of CyberLaw PC, Washington D.C., USA. Respondent is Quantum Web Designers (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chinesevisaexpress.net> and <chinesevisaexpress.mobi>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2011; the National Arbitration Forum received payment on September 23, 2011.
On September 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2011 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@chinesevisaexpress.net and postmaster@chinesevisaexpress.mobi. Also on September 29, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2011, 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 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names are identical to Complainant’s CHINESE VISA EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names.
3. Respondent registered and used the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tony Ashtiani, provides international travel services, specifically authentication of documents, visas, and passports related to the Chinese Consulate in Washington D.C., under its CHINESE VISA EXPRESS mark. Complainant registered the <chinesevisaexpress.com> domain name on May 3, 2005, to offer its international travel services. Complainant also has registered the CHINESE VISA EXPRESS mark with the District of Columbia’s Department of Consumer and Regulatory Affairs on May 7, 2009. Complainant owns a business license, that was issued under its CHINESE VISA EXPRESS mark on May 7, 2009, and a business tax registration, that was registered on December 14, 2007 with the District of Columbia’s Business Tax Registration Section.
Respondent, Quantum Web Designers, registered the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names no earlier than October 8, 2010. The disputed domain names resolve to websites that advertise services that compete with Complainant’s services.
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 alleges common law rights in its CHINESE VISA EXPRESS mark and does not provide trademark registrations with a national trademark authority. In SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000), and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panels found that a trademark registration is not necessary to establish rights in the mark under Policy ¶ 4(a)(i). This Panel finds accordingly.
The record indicates that Complainant registered the <chinesevisaexpress.com> domain name on May 3, 2005, and has consistently operated the resolving website since that time. Complainant uses its domain name to offer its international travel services. Complainant provides evidence of its registration of the CHINESE VISA EXPRESS mark with the District of Columbia’s Department of Consumer and Regulatory Affairs on May 7, 2009. Complainant also includes a copy of its business license that was issued under its CHINESE VISA EXPRESS mark on May 7, 2009. Finally, Complainant provides evidence of its business tax registration on December 14, 2007 with the District of Columbia’s Business Tax Registration Section. Complainant alleges that it has continuously used the CHINESE VISA EXPRESS mark during this time and still uses the mark to offer international travel services at this time. More specifically, Complainant contends that its mark has established secondary meaning for the following reasons:
Complainant has acquired the requisite secondary meaning in its mark. First, as discussed, Complainant has owned and operated ChineseVisaExpress.com for a period of over six years, during which it acquired a good reputation as a source for the services provided. See Exhibits #4 and #5. Complainant also regularly uses the “Chinese Visa Express” trade name in business-to-business transactions. See Exhibit #9, Proposal From SEO Company.
Second, Complainant has heavily advertised its services to the public. For example, Complainant maintains active “company pages” on popular social networking sites, including Facebook, LinkedIn and Twitter. See Exhibit #10, Social Media Screenshots. Each of these pages clearly advertises the services under the trade name “Chinese Visa Express.” Id. Furthermore, Complainant invests heavily in promotion of its services, consistently spending thousands of dollars each month on advertising. See Exhibit #11, Payments to SEO Company.
Third, Complainant has made outreach efforts specifically identifying “Chinese Visa Express” as a source for its specific services. Complainant has issued at least one press release on the heavily trafficked public relations website PR.com. See Exhibit #12, Press Release.
Finally, Complainant notes that prior panels have taken into account “the fact that the Respondent has not challenged the Complainant's evidence or its claim to unregistered trade mark rights.” La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate, WIPO Case No. D2009-0534, (July 1, 2009). Complainant would urge the present panel to follow suit if Respondent fails to challenge Complainants’ showings herein.
As discussed, Complainant has a demonstrated history of the consistent use and promotion of the mark “Chinese Visa Express.” Accordingly, Complainant has rights in the mark “Chinese Visa Express” for the purposes of the Policy.
Complainant’s evidence, while sparse, is sufficient to minimally establish secondary meaning, particularly in light of Respondent’s failure to submit a response. See, e.g,. Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006); Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007). Based on this precedent and the facts in the record, the Panel holds that Complainant has established common law rights in its CHINESE VISA EXPRESS mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names are identical to Complainant’s CHINESE VISA EXPRESS mark. Complainant asserts that the only differences between the disputed domain names and Complainant’s mark are the removal of the spaces and the addition of the generic top-level domain (“gTLD”) “.net” or “.mobi.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), and George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panels found that the removal of a space and the addition of a gTLD did not alter the fact that a disputed domain name is identical to a complainant’s mark. Thus, the Panel concludes that Respondent’s <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names are identical to Complainant’s CHINESE VISA EXPRESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in either of the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names. The WHOIS information identifies the registrant of the disputed domain names as “Quantum Web Designers,” which Complainant argues is not similar to the disputed domain names. Respondent does not present any evidence. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panels found that the respondent was not commonly known by a disputed domain name based on the WHOIS information and the other evidence in the record. Therefore, the Panel finds that Respondent is not commonly known by the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names. Complainant claims that Respondent was in contact with Complainant prior to the registration of the disputed domain names and that Respondent and Complainant worked together to provide international travel services. Complainant asserts that it stopped working with Respondent due to customer complaints. Complainant alleges that three days after it ended its relationship with Respondent, Respondent registered both of the disputed domain names which resolve to websites that advertise services that directly compete with Complainant’s services. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), and Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panels found that a respondent lacked rights and legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) and (iii) when the respondent used the disputed domain name to resolve to a website to advertise competing services. Consequently, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is attempting to trade on Complainant’s name by using the identical disputed domain names to offer identical, competing services. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), and Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007), the panels found bad faith registration and use under Policy ¶ 4(b)(iv) when the disputed domain names resolved to a website containing advertisements for competing services. Consequently, the Panel holds that Respondent registered and uses the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chinesevisaexpress.net> and <chinesevisaexpress.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 28, 2011
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