Ascentive, LLC v. yushan li
Claim Number: FA1206001448514
Complainant is Ascentive, LLC (“Complainant”), represented by Alexis Arena, Pennsylvania, USA. Respondent is yushan li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gangangansoku.net>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
The Honorable R. Glen Ayers as Panelist.
Darryl C. Wilson as Panelist.
Hector A. Manoff as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 13, 2012.
On June 14, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <gangangansoku.net> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@gangangansoku.net. Also on June 18, 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 July 20, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Honorable R. Glen Ayers and Darryl C. Wilson as Panelists and Hector A. Manoff as Chair.
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
1. Complainant uses the GANGANGANSOKU mark to market and produce computer software that is meant to improve computer performance.
2. Complainant owns a trademark registration with the Japan Patent Office (“JPO”) for the GANGANGANSOKU mark (Reg. No. 5,451,593 registered November 18, 2011).
3. Complainant also owns the <gangangansoku.com> and <gangangansoku.jp> domain names, which have been used since at least as early as June, 2010 to sell online software products.
4. Respondent’s <gangangansoku.net> domain name is identical to Complainant’s GANGANGANSOKU mark because the addition of the generic top-level domain (“gTLD”) “.net” does not cause a domain name to be distinct from the mark.
5. Respondent uses Ascentive’s logo and software images to identify
competing software products advertised on its website.
6. Respondent does not sell goods or services in connection with the <gangangansoku.net> domain name but redirects Internet users to a website that advertises similar competing products to those offered by Complainant, which is not a bona fide offering of goods or services under ICANN Policy ¶ 4(c)(i).
7. Respondent attempts to profit from misleadingly diverting customers to a competitor of Complainant.
8. Respondent registered and is using the <gangangansoku.net> domain primarily for the purpose of disrupting Complainant’s business.
9. Respondent is intentionally attempting to attract internet users to the <gangangansoku.net> domain name by creating a likelihood of confusion with Complainant’s GANGANGANSOKU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Ascentive, LLC is a company based in the United States of America, that has been engaged in selling computer software products since 2008. As of June 2010, it began offering its products in Japan under its GanGanGanSoku trademark, through its websites <gangangansoku.com> and <gangangansoku.jp>. Complainant registered the GANGANGANSOKU mark in Japan on November 18, 2011.
Originally registered on July 5, 2011, the <gangangansoku.net> domain name was acquired by Respondent Yushan Li from a prior owner in April 2012, who began using it to advertise competing software products while using Ascentive’s trademark and logo image without authorization.
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(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 respondentecide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(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 registered the GANGANGANSOKU mark in Japan on November 18, 2011. Therefore, the Panel finds that Complainant has established rights in the GANGANGANSOKU mark pursuant to Policy ¶ 4(a)(i), even though the mark was not registered in the countries of Complainant or Respondent residences. In this regard, previous panels have held that evidence of a trademark registration satisfies the requirement of demonstrating rights in a particularly given mark regardless of where a complainant has registered its mark. See Implus Footcare, LLC v. Ellison, FA 1406760 (Nat. Arb. Forum Oct. 24, 2011) (finding that trademark registrations, including those with the Japanese Patent Office, are sufficient to establish rights in a mark pursuant to 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 has presented evidence of its trademark registration with the JPO for its GANGANGANSOKU mark (Reg. No. 5,451,593 registered November 18, 2011). Based on this evidence, the Panel finds that Complainant has fulfilled Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <gangangansoku.net> domain name is identical to Complainant’s GANGANGANSOKU mark under Policy ¶ 4(a)(i). Complainant argues that adding the gTLD “.net” does not distinguish the <gangangansoku.net> domain name from Complainant’s GANGANGANSOKU mark. The Panel notes that Respondent’s <gangangansoku.net> domain name contains Complainant’s mark in its entirety. Prior panels have found that adding a gTLD is insufficient in distinguishing a disputed domain name from a complainant’s mark. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark). Based on these facts and prior cases, the Panel finds that Respondent’s <gangangansoku.net> domain name is identical to Complainant’s GANGANGANSOKU mark.
Before the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in such domain name. 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.”). The Panel finds that Complainant has produced a prima facie case because it provided evidence of its trademark rights in a mark which is identical to the disputed domain name and it has also contended that Respondent is not known by such name.
Complainant alleges that Respondent is not commonly known by the <gangangansoku.net> domain name pursuant to Policy ¶ 4(c)(ii). Previous panels have held that where there is no evidence in the record indicating that the Respondent was commonly known by the disputed domain name then respondent has no rights or legitimate interest in the disputed domain name. See 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Complainant contends that Respondent has no trademark or service mark rights in the GANGANGANSOKU mark, and is not commonly known by the mark under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information identifies “yushan li” as the domain registrant and, since Respondent has not filed a reply to the present complaint, the Panel finds that Complainant has fulfilled Policy ¶ 4(c)(ii) and Respondent is not commonly known by the <gangangansoku.net> domain name.
Complainant also contends that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(ii). Earlier panels have found that using an identical domain name to divert Internet users to a website offering competing products, and where respondent is financially profiting, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Complainant further contends that Respondent is using the <gangangansoku.net> domain name to divert Internet users seeking Complainant’s services, to a website offering software from Complainant’s competitors. Complainant contends that Respondent “uses Ascentive’s logo and software images to identify the software products advertised on its website, but when you click to download the software, it prompts you to download the software . . .” not of Complainant, but of its competitor, RegistryWinner. Based on these allegations and provided evidence, the Panel finds that Respondent’s use of an identical domain name to divert internet users to a site featuring competing products and financially benefiting Respondent is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
Thus, The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of the <gangangansoku.net> domain name constitutes bad faith under Policy ¶ 4(b)(iii). Typically, panels find that using an identical domain name to attract Internet users to a site displaying competing products disrupts a complainant’s business and constitutes bad faith registration in accordance with Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . . .”). Complainant claims that Respondent is using the identical <gangangansoku.net> domain name for the primary purpose of disrupting Complainant’s business by creating a likelihood of confusion and attempts to attract Internet users to Respondent’s website for commercial gain. Complainant asserts that the disputed domain name uses Complainant’s mark and logos to display products for download, but that when an Internet user clicks to download what appears to be Complainant’s product, they actually download a competing product. Thus, based on this assertion in conjunction with prior UDRP cases, the Panel finds that Respondent acquired and uses the <gangangansoku.net> domain name in bad faith under Policy ¶ 4(b)(iii).
Furthermore, when a respondent registers an identical domain name containing complainant’s mark and offers product downloads that compete with a complainant’s business, previous panels have found bad faith registration under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Complainant asserts Respondent intentionally attempts to attract Internet users to the <gangangansoku.net> resolving website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Complainant contends that the resolving website features competing content and products. Complainant asserts that Respondent is imitating the look and design of Complainant and uses Complainant’s logo without permission or any kind of authorization. Complainant also alleges that Respondent receives fees for diverting the confused Internet users to Complainant’s competitors’ products. Based on these uncontested assertions, the Panel finds that Respondent acquired and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) when attracting consumers and financially profiting from the confusion between the disputed domain name and registered mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that the Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <gangangansoku.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
The Honorable R. Glen Ayers, Panelist
Héctor A. Manoff, Chair
Dated: July 30, 2012
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