USVP Management Company LLC v. Xiaohua Dai
Claim Number: FA1208001457355
Complainant is USVP Management Company LLC (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Xiaohua Dai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usvpvip.com>, registered with eNom 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2012; the National Arbitration Forum received payment on August 10, 2012.
On August 10, 2012, eNom Inc. confirmed by e-mail to the National Arbitration Forum that the <usvpvip.com> domain name is registered with eNom Inc. and that Respondent is the current registrant of the name. eNom Inc. has verified that Respondent is bound by the eNom 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 August 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@usvpvip.com. Also on August 14, 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 September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. The domain name contains the entire USVP mark, in addition to the generic term “vip,” meaning “Very Important Person,” and the generic top-level domain (“gTLD”) “.com.”
i. Respondent, as an individual or business, is not commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to resolve to a website featuring content about Complainant’s business in both English and Chinese. Respondent’s website contains directly copied material from Complainant’s official website, and Respondent is attempting to pass itself off as Complainant.
iii. Respondent attempts to collect personal information from Complainant’s customers.
i. Respondent’s use of the disputed domain name to pass itself off as Complainant is disruptive of Complainant’s business.
ii. Respondent is attempting to attract Internet users, for commercial compensation, to its website by creating confusion with Complainant’s mark as to the source, sponsorship, or affiliation of the disputed domain name.
iii. Respondent is attempting to collect sensitive and personal information from Complainant’s customers who happen upon the disputed domain name.
For the reasons set forth below, the panel finds Complainant is entitled to the relief requested.
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.”).
Complainant claims to have rights in the USVP mark that it uses to provide its venture capital services. Complainant notes that it owns many trademark registrations worldwide for the USVP mark, including those with the USPTO (Reg. No. 2,531,857 registered January 22, 2002), the CIPO (Reg. No. TMA577,358 registered March 12, 2003), OHIM (Reg. No. 2,152,387 registered August 16, 2002), and the SAIC (Reg. No. 1,955,314 registered September 21, 2002). The Panel finds that Complainant’s trademark registrations are sufficient for it to have established rights in the USVP mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Further, Complainant argues that Respondent’s <usvpvip.com> domain name is confusingly similar to the USVP mark. Complainant asserts that the disputed domain name contains the entire USVP mark, in addition to the generic term “vip,” meaning “Very Important Person,” and the gTLD “.com.” The Panel finds such additions are insufficient to render the disputed domain name distinct from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <usvpvip.com> domain name is confusingly similar to Complainant’s USVP mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent is not and has not been commonly known by the disputed domain name either as an individual or a business. Complainant asserts that Respondent has no trademark registration or authorization to use the USVP mark in any way. The registrant of the <usvpvip.com> domain name is identified as “Xiaohua Dai” in the WHOIS information. The Panel finds that the record supports a finding 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).
Further, Complainant argues that Respondent is using the disputed domain name to falsely hold itself out as a genuine USVP website. Complainant notes that Respondent’s website displays text in both Chinese and English, as well as a “Member Login” section containing fields to enter “Account,” “Password,” and “Verification Code” information. Complainant states that the website contains general biographical information about Complainant’s business as well as content “largely, if not entirely, plagiarized from Complainant’s genuine webpage . . .” The Panel finds that Respondent’s use of the disputed domain name to pass itself off as Complainant 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). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Further, the Panel also finds that Respondent is attempting to phish for the personal information of Complainant’s customers that happen upon the website and that phishing 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). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant has proven this element.
Complainant asserts that Respondent’s use of the disputed domain name to pass itself off as Complainant and obtain the personal information of Complainant’s customers is disruptive of Complainant’s business. Complainant argues that such disruption is evidence of bad faith registration and use. The Panel finds that Respondent’s attempts to pass itself off as Complainant are indicative of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Further, Complainant asserts that Respondent is attempting to commercially gain from its use of the disputed domain name as described above. Complainant argues that Respondent presumably profits in bad faith from the information entered by Complainant’s customers who may believe that they are visiting Complainant’s legitimate website. Complainant notes that Respondent is attempting to confuse Internet users into believing the website is sponsored by, or was created by, Complainant by posting information relating to Complainant and taking information directly from Complainant’s official website. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Further, Complainant argues that Respondent’s attempts to pass itself off as Complainant in order to gain the personal information of Complainant’s customers is, in and of itself, evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds as such under Policy ¶ 4(a)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the USVP mark. Complainant argues that display of information taken directly from Complainant’s website also indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usvpvip.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 21, 2012
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