NetJets Inc. v. ZHANG PENG
Claim Number: FA1209001461726
Complainant is NetJets Inc. (“Complainant”), represented by Beverly A. Marsh of Standley Law Group LLP, Ohio, USA. Respondent is ZHANG PENG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netjetschina.com>, registered with BIZCN.COM, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2012; the National Arbitration Forum received payment on September 7, 2012. The Complaint was received in both English and Chinese.
On September 9, 2012, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <netjetschina.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the name. BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.COM, 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 September 11, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 1, 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@netjetschina.com. Also on September 11, 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 Notification of Respondent Default.
On October 8, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <netjetschina.com> domain name, the domain name at issue, is confusingly similar to Complainant’s NETJETS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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.
Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") and China’s State Administration of Industry and Commerce (“SAIC”) for the NETJETS mark as follows:
i. USPTO (e.g., Reg. No. 2,671,376 registered January 7, 2003); and
ii. SAIC (e.g., Reg. No. 1,989,984 registered March 21, 2003). Respondent’s <netjetschina.com> domain name is confusingly similar to Complainant’s NETJETS mark, merely adding the geographic identifier “china” and the generic top-level domain (“gTLD”) “.com.” Respondent is not commonly known by the disputed domain name and does not have any trademark rights to the term “netjetschina.” Respondent has not been licensed or granted permission to use the NETJETS mark. Respondent’s domain name resolves to a website that is inactive, merely displaying information that the website is offline and inactive. Respondent is attempting to prevent Complainant from reflecting its mark in a domain name, which is evidence of bad faith under Policy ¶ 4(b)(ii). Respondent’s non-use of the disputed domain name is further evidence of Respondent’s bad faith. Respondent did not submit a Response and registered the disputed domain name on June 8, 2011.
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 owns numerous trademark registrations for the NETJETS mark around the world, including registrations with the USPTO (e.g., Reg. No. 2,671,376 registered January 7, 2003) and SAIC (e.g., Reg. No. 1,989,984 registered March 21, 2003) for the NETJETS mark. Complainant’s trademark registrations sufficiently establish its rights in the NETJETS mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <netjetschina.com> domain name is confusingly similar to Complainant’s NETJETS mark, merely adding the geographic identifier “china” and the gTLD “.com.” See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name and does not have any trademark rights to the term “netjetschina.” The WHOIS information identifies the registrant of the disputed domain name as “ZHANG PENG.” Further, Respondent has not been licensed or granted permission to use the NETJETS mark. Accordingly, 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).
Respondent’s disputed domain name resolves to a website that is inactive, merely displaying information that the website is offline and inactive. See Complainant’s Annex L. Respondent’s non-use of the disputed domain name indicates that Respondent has no rights or legitimate interests in the disputed domain name and does 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). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered the disputed domain name in order to prevent Complainant from reflecting its NETJETS mark in a corresponding domain. Respondent has a pattern of registering domain names, including Complainant’s mark with a geographic location, such as <netjetsindia.com>. Complainant also notes that it has prepared to enter into the Asian market in recent years and Respondent has “undoubtedly registered the disputed domain name in order to prevent Netjets from reflecting its Marks in such a manner as Netjets has employed in other geographical locations. . . .” Respondent’s disputed domain name was registered in bad faith under Policy ¶ 4(b)(ii). Policy ¶ 4(b)(ii) allows for a finding of bad faith where “Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.” (emphasis added).
The Panel also notes that it may look to the totality of the circumstances in making a bad faith determination under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent is not making an active use of the disputed domain name. Complainant has supplied a screenshot of the error page which appears when an Internet user attempts to go to the <netjetschina.com> domain name. Respondent’s failure to make an active use of the disputed domain name is sufficient grounds for a finding of bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <netjetschina.com> domain name be TRANSFERRED from Respondent.
James A. Carmody, Esq., Panelist
Dated: October 15, 2012
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