Sunburst Products, Inc. d/b/a Free Style U.S.A. v. Wanzhongmedia / Zhong Wan
Claim Number: FA1202001429993
Complainant is Sunburst Products, Inc. d/b/a Free Style U.S.A. (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chronshark.com>, registered with Eurodns S.A.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2012; the National Arbitration Forum received payment on February 16, 2012.
On February 20, 2012, Eurodns S.A. confirmed by e-mail to the National Arbitration Forum that the <chronshark.com> domain name is registered with Eurodns S.A. and that Respondent is the current registrant of the name. Eurodns S.A. has verified that Respondent is bound by the Eurodns S.A. 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 February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 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@chronshark.com. Also on February 24, 2012, 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 March 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following submissions.
1. Complainant is the owner of registrations for the SHARK (Reg. No. 1,640,415 registered April 9, 1991) and SHARK TIDE marks (Reg. No. 2,578,975 registered June 11, 2002) with the United States Patent and Trademark Office ("USPTO").
2. Complainant uses its marks for watches and watch related accessories and has done so since at least 1986.
3. Respondent registered the disputed domain name on October 2, 2010.
4. Respondent’s domain name is confusingly similar to Complainant’s SHARK mark adding only the descriptive abbreviation “chron,” which is a common prefix for the word “time.”
5. Respondent uses the disputed domain name for a links directory to third-party watch manufacturers and sellers in competition with Complainant.
6. Respondent has been the named respondent in previous UDRP actions in which it was ordered to transfer domain names to the respective complainants. See Cabela’s, Inc. v. Wanzhongmedia / Zhong Wan, FA 1414315 (Nat. Arb. Forum Dec. 12, 2011); see also J.P. SA COUTO, S.A. v. Wan Zhong, Wanzongmedia, D2011-1045 (WIPO July 28, 2011).
7. Complainant registered the domain name and has used it in bad faith for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a company incorporated in California engaged in the marketing and distribution of performance watches and accessories sold under the SHARK and SHARK TIDE trademarks.
2. Complainant is the owner of registrations for the SHARK (Reg. No. 1,640,415 registered April 9, 1991) and SHARK TIDE marks (Reg. No. 2,578,975 registered June 11, 2002) with the USPTO.
3. Respondent registered the disputed domain name on October 2, 2010 and has linked it to a website consisting of a links directory to third-party watch manufacturers and sellers in competition with Complainant.
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.
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.”).
Complainant submits evidence that it owns registrations for the SHARK (Reg. No. 1,640,415 registered April 9, 1991) and SHARK TIDE marks (Reg. No. 2,578,975 registered June 11, 2002) with the USPTO. The Panel finds that such registrations with the USPTO are sufficient for Complainant to establish rights under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that the <chronshark.com> domain name is confusingly similar to the SHARK mark. Complainant notes that the prefix and abbreviation “chron” added to the SHARK mark is a reference to “time” or “timepiece” and is thereby descriptive of Complainant and its watches and widely understood by internet users as such. Further, Complainant argues that the addition of a generic top-level domain (“gTLD”), such as “.com,” is not relevant under a Policy ¶ 4(a)(i) analysis. The Panel agrees with all of those submissions and finds for those reasons that the disputed domain name is confusingly similar to Complainant’s SHARK mark under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant has therefore made out the first of the three elements that it must establish.
It is now well-established 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Applying that principle, the Panel finds that Complainant has made out a prima facie case as required. The prima facie case is based on the following considerations:
(a) Respondent has chosen as its domain name Complainant’s SHARK mark and has embodied the whole of the mark into the domain name, adding only as a prefix the word “chrono” which is the equivalent to the words “time” and “ timepiece” and the generic Top Level Domain “.com”;
(b) Respondent has then linked the domain name to a website consisting of a links directory to third-party watch manufacturers and sellers in competition with Complainant, thus giving the false impression to internet users that it is an official domain name of Complainant and that it has led to an official website of Complainant promoting or endorsing those competing watches.
(c) Moreover, Complainant argues that Respondent is not, and has not been, commonly known by the disputed domain name. Complainant points the Panel to the WHOIS information as evidence of this. The Panel notes that the WHOIS information on record identifies the domain name registrant as “Wanzhongmedia / Zhong Wan,” which the Panel finds is not similar to the <chronshark.com> domain name. Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
(d) Complainant also argues that Respondent is not using the disputed domain name for 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). In support of this contention, Complainant notes and supplies screen shots of the resolving website showing, that Respondent is using the domain name as a links directory. The Panel notes that third-party links to Complainant’s competitors in the timepiece industry are located under headings such as “Mens Watches,” “New Ladies Watches,” “Mends Designer Watches Sale,” and “Fendi Watches For Men,” among many others. The Panel therefore agrees with Complainant’s submission and finds that Respondent’s use of the disputed domain name does not amount to 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against him, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(ii). In support of this contention, Complainant references two prior cases in which UDRP panels ordered Respondent to transfer the domain names at issue. See Cabela’s, Inc. v. Wanzhongmedia / Zhong Wan, FA 1414315 (Nat. Arb. Forum Dec. 12, 2011); see also J.P. SA COUTO, S.A. v. Wan Zhong, Wanzongmedia, D2011-1045 (WIPO July 28, 2011). The Panel agrees with Complainant in relying on those decisions and finds that Respondent’s previous adverse UDRP decisions assist the Panel in deciding on the balance of probabilities that Respondent registered and used the disputed domain name in the present proceeding in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Secondly, Complainant also submits that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors in the timepiece industry disrupts its business and is evidence of bad faith. The Panel agrees and finds as such under Policy ¶ 4(b)(iii), as Respondent is improperly using Complainant’s trademark to damage its business by encouraging internet users to buy the watches of rival suppliers. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Complainant argues that Respondent’s redirection scheme results in commercial gain for Respondent through its receipt of click-through or other fees. Complainant asserts that Internet users seeking Complainant are instead routed to various third-party businesses, which results in profit for Respondent as a result of its in bad faith activities. The Panel agrees and finds that Respondent’s use of the disputed domain name for a links directory website is evidence of its bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. 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.’”).
In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chronshark.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 29, 2012
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