Jiawei Lu v. Jie Zhang
Claim Number: FA1111001414716
Complainant is Jiawei Lu (“Complainant”), represented by Valentin Gurvits, Massachusetts, USA. Respondent is Jie Zhang (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <5123.com>, registered with Network Solutions, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2011; the National Arbitration Forum received payment on November 9, 2011.
On November 24, 2011, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <5123.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, 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 December 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@5123.com. Also on December 5, 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.
A timely Response was received and determined to be complete on December 27, 2011.
Complainant submitted a timely Additional Submission that was received on January 3, 2012.
Respondent submitted a timely Additional Submission that was received on January 9, 2012.
On January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant states that Complainant registered the disputed domain name “on or about” May 18, 2009, and that it was used for a news board providing up to date news to Internet users world-wide. The Complainant claims that Complainant derived revenue from encouraging visitors to the news board and received income from the generated website traffic, and that <5123.com> has been used world-wide, including the USA. Accordingly, Complainant claims to have common law trade mark rights in 5123.COM since May 2009.
The Complainant accuse the Respondent for having stolen the disputed domain name on September 2011, by fraudulently changing the Complainants account information and - without the Complainants knowledge – transferring the ownership of <5123.com> to the Respondent.
The Complainant concludes that the Respondent has no rights or legitimate interest to the disputed domain name, as a) the Respondent has stolen <5123.com> from the complainant, and b) the Complainant has trademark rights that predates the Respondent’s rights – if any at all.
B. Respondent
The Respondent states that Respondent has legally bought the disputed domain name from the Complainant, in September 2011 for a price of 100,000 Chinese RMB. According to the Respondent, the Complainant and the Respondent used a special third party company to assist as intermediary, all three parties claimed to have signed an International Domain Trading Contract. The Respondent claims that the Complainant has thereafter broken the contract.
C. Additional Submissions
Complainant
The Complainant claims that the Response should be ignored in its entirety, and points out that the Respondent is hiding his true identity by using a fraudulent non-existent street address and phone number. The Complainant further points out that the Respondent has not provided any proof of payment or any other consideration regarding the disputed domain name.
Finally, Complainant claims that the documentation provided by the Respondent regarding Complainant’s identity documentations such as passport and ID, seems to be forged.
Respondent
The Respondent states the Complainant and the Respondent have met face to face – and then invited the third party company for notarization – in order to transfer the disputed domain name. Respondent claims that Respondent can supply transfer contract signed by the parties, and that the payment has been done.
Further, Respondent claims that it is the ID documents now provided by the Complainant, that is false documents.
The Panel notes that the arguments and supporting evidence provided by each Party are extremely sparse and limited. However, the Panel concludes that:
- the Complainant claims to have used 5123.COM since May 18, 2009
- the disputed domain name was registered by the Respondent on September 17, 2011
The Panel finds that the Complainant has failed to prove at least the first element of paragraph 4(a) of the Policy.
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.
Complainant does not have a trademark registration for the 5123.COM mark. Registration of a trademark with a governmental authority is however not necessary in order to establish rights in the mark under Policy ¶ 4(a)(i), provided that complainant can establish common law rights through a sufficient showing of secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001)(“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The Complainant asserts that it has common law rights in the 5123.COM mark because it acquired the mark as a domain name on May 18, 2009 and has been using it in commerce since that date. Complainant argues that it derived revenue from encouraging visitors to the website at that domain name.
However, the Panel notes that Complainant has offered absolutely no evidence in support of its extensive use of 5123.COM. The only documentation provided is a signed statement by the Complainant.
Thus, the Complainant has provided insufficient evidence that it has common law rights through extensive and continuous use that has resulted in the public associating the number / term 5123.COM with the Complainant. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Koninklijke Nederlandse Springstoffen Fabriek N.V. v. Kim Hyungho GMM, D2002-0707 (WIPO October 1, 2002)(finding that “as long as there is no registration of the letters KNSF as a company name or a trademark, and the Complainant has not substantiated that the abbreviation has been used to such an extent that it has been generally known to the relevant commercial circuit as a trademark or trade name for Complainant, Complainant has failed to prove that he has rights in KNSF as a trademark.”)
In the absence of further evidence, the Panel therefore concludes that the Complainant has not satisfied Policy ¶ 4(a)(i). In other words: has not been able to prove that it has, in the meaning of the Policy, protected trademark rights for 5123.COM.
As the Complainant has failed to present sufficient proof of rights in the 5123.COM mark, it is unnecessary to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (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); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
As the Complainant has failed to proof the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that the <5123.com> domain name shall REMAIN with Respondent.
Petter Rindforth, Panelist
Dated: January 17, 2012
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