national arbitration forum

 

DECISION

 

Network Solutions LLC v. Eve Huang / Network-Solution Asia

Claim Number: FA1206001449947

 

PARTIES

Complainant is Network Solutions LLC (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA.  Respondent is Eve Huang / Network-Solution Asia (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <network-solution.asia>, registered with 35 Technology Co., Ltd.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2012; the National Arbitration Forum received payment on June 21, 2012. The Complaint was submitted in both Chinese and English.

 

On June 25, 2012, 35 Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <network-solution.asia> domain name is registered with 35 Technology Co., Ltd. and that Respondent is the current registrant of the name.  35 Technology Co., Ltd. has verified that Respondent is bound by the 35 Technology Co., Ltd. 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 July 2, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 23, 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@network-solution.asia.  Also on July 2, 2012, the Chinese language 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 Chinese language Notification of Respondent Default.

 

On July 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

 

 

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s <network-solution.asia> domain name, the domain name at issue, is confusingly similar to Complainant’s NETWORK SOLUTIONS    mark.

 

Respondent does not have any rights or legitimate interests in the domain name at issue.

 

Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns trademark rights in its NETWORK SOLUTIONS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,330,193 registered April 9, 1985). Complainant also holds trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 3,625,126 registered August 28, 2008.  Complainant uses its NETWORK SOLUTIONS mark for directory services; domain registration; website consultation, analysis, evaluation, creation, and brand establishment of domain names; electronic mail services; email and website forwarding services’ website security services; website traffic monitoring and reporting services; and other related computer and website-based services.  Complainant was founded in 1979 and adopted the NETWORK SOLUTIONS mark at that time.

 

Respondent registered the <network-solution.asia> domain name as early as May 7, 2012. The disputed domain name resolves to a website that contains information about Respondent’s alleged domain name registration, management, parking, reselling, web hosting, and “search engine submissions” services, as well as advertisements for those services. Respondent’s website is a “façade that is rife with dead end links and content that has been pulled from other websites.” Respondent has sent unsolicited emails to Complainant’s customers in an attempt to lure them into “defensively” registering domain names under top-level domains (“TLDs”) such as “.asia,” “.cn,” “.com.cn,” “.tw,” “.com.tw,” “.hk,” “.com.hk,” “.in,” “.jp,” and “.kr,” which amounts to “domain name slamming”—false claims from an unproven Chinese Registrant that another entity has attempted to register domain names using the recipient’s trademark. Respondent uses the <network-solution.asia> domain name in violation of Complainant’s rights. The disputed domain name is confusingly similar to Complainant’s mark. Respondent has no rights or legitimate interests in the domain name, and the disputed domain name and resolving website create a false impression of association with Complainant’s business. Respondent is not commonly known by the disputed domain name. Respondent’s registration and use of the disputed domain name is in bad faith because Respondent had actual knowledge of Complainant’s NETWORK SOLUTIONS mark due to the mark’s international fame. Respondent used the <network-solution.asia> domain name to attract Internet traffic to its website for financial gain. Respondent employed the use of typosquatting to create a slightly different name from complainant’s mark, which demonstrates bad faith.

 

DISCUSSION

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 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.”).

 

Identical and/or Confusingly Similar

Complainant owns trademark rights in its NETWORK SOLUTION mark with the USPTO (e.g., Reg. No. 1,330,193 registered April 9, 1985) and the SAIC (Reg. No. 3,625,126 registered August 28, 2008). Complainant’s multiple registrations with the USPTO and the SAIC demonstrate Complainant’s rights in its NETWORK SOLUTIONS mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).

 

The disputed domain name uses the NETWORK SOLUTIONS mark in its entirety, with a hyphen between the words of the mark rather than the existing space and without the letter “s” at the end of “solutions.” Further, the disputed domain name includes the sponsored top-level domain (“sTLD”) “.asia.” The changes made in the <network-solution.asia> domain name do not alleviate its confusing similarity to Complainant’s NETWORK SOLUTIONS mark under Policy ¶ 4(a)(i). See Novartis AG v. Parti / Zak Advisors Pvt Ltd, FA 1433639 (Nat. Arb. Forum April 19, 2012) (concluding that the <dailies.asia> domain name was confusingly similar to the complainant’s mark, as it adds only the sTLD “.asia” to the complainant’s entire mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

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.”).

 

The WHOIS information associated with the <network-solution.asia> domain name identifies “Eve Huang,” of “Network-Solution Asia” as the registrant of the disputed domain name.  Although Respondent’s business identity, as described in the WHOIS information, is known as “Network-Solution Asia,” no other evidence exists to suggest that Respondent is truly commonly known by the domain name, as was so known prior to the disputed domain name’s registration, pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

 

Respondent’s use of the <network-solution.asia> domain name is not a legitimate use because Respondent creates a false impression of affiliation with Complainant’s business by contacting Complainant’s customers with deceptive emails. Respondent’s resolving website contains information about and advertisements for Respondent’s putative domain name registration and related services.  However, the website is full of dead-end links, “all designed to create the illusion that Respondent. . . offer[s] the same domain registration and web hosting services as Complainant.” The panel in Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003), held that the respondent used the domain name, which included the complainant’s mark, to sell products in competition with the complainant, which demonstrated neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.  Respondent’s use of the <network-solution.asia> domain name to advertise purported competing services and contact Complainant’s customers deceptively is not 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).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent registered the <network-solution.asia> domain name with the purpose of attracting Internet traffic to its website by creating a likelihood of confusion in order to financially profit.  The resolving website offers similar services to Complainant and Internet users who find Respondent’s webpage will believe that it is supported by Complainant.  Respondent’s use of the disputed domain name in purporting to offer competing services to attract Internet consumers to its website in order to make a profit demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).

 

Respondent’s registration of the <network-solution.asia> domain name constitutes typosquatting because it omits the “s” from the word “solutions” in the mark, and adds a hyphen between the words of the mark.  Respondent’s typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).

 

Respondent “undoubtedly” registered the <network-solution.asia> domain name in bad faith because Respondent had actual knowledge of the NETWORK SOLUTIONS mark, due to the mark’s fame and recognition in the United States, China, and other countries around the world. The content of Respondent’s resolving website and use of a confusingly similar domain name to contact Complainant’s customers by e-mail also demonstrate Respondent’s actual knowledge of Complainant’s mark. The panel in Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006), held that it could be inferred that the respondent had actual notice of the complainant’s rights in the mark, and thus registered the disputed domain name in bad faith, as respondent’s services were marketed toward an industry that the complainant covered. The Panel therefore concludes that Respondent had actual knowledge of Complainant’s NETWORK SOLUTIONS mark and thus registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <network-solution.asia> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  August 1, 2012

 

 

 

 

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