national arbitration forum

 

DECISION

 

Namecheap, Inc. v. duanxiangying / laiqiang / duanfuquan

Claim Number: FA1309001519125

PARTIES

Complainant is Namecheap, Inc. (“Complainant”), represented by Liz Wang of Rome & Associates, A.P.C., California, USA.  Respondent is duanxiangying (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <namechea.com>, <naecheap.com>, and <nameceap.com>, registered with eName 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received payment on September 12, 2013. The Complaint was submitted in both Chinese and English.

 

On September 12, 2013, eName Technology Co.,Ltd. confirmed by e-mail to the National Arbitration Forum that the <namechea.com>, <naecheap.com>, and <nameceap.com> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names.  eName Technology Co., Ltd. has verified that Respondent is bound by the eName 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 September 20, 2013, the Forum served the Chinese langauge Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 10, 2013 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@namechea.com, postmaster@naecheap.com, and postmaster@nameceap.com.  Also on September 20, 2013, 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 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant, Namecheap, Inc., has become an industry leader in offering competitively-priced domain name registrations and related services such as private registration, web hosting, URL forwarding, security features, e-mail forwarding and other functions all related to the registration, management, build-out and administration of domain names.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NAMECHEAP mark (Reg. No. 4,213,990, filed February 29, 2012, registered September 25, 2012); and for the NAMECHEAP.COM mark (Reg. No. 3,622,358, filed September 26, 2008, registered May 19, 2009, first use in commerce on November 9, 2000).
    3. The domains at issue are confusingly similar to Complainant’s NAMECHEAP mark because each domain name contains a misspelled version of the mark and adds the generic top-level domain (“gTLD”) ”.com.”
    4. Respondent is not commonly known by the disputed domain names.
    5. Respondent uses the disputed domain names to provide links and advertisements for competing website hosting and domain name registration services.
    6. Respondent registered the domains which all contain misspelled versions of Complainant’s NAMECHEAP mark.
    7. Respondent’s domain names were used to redirect traffic to Complainant’s competitors.
    8. Respondent’s domain names, which link to Complainant’s competitors, represent an attempt by Respondent to commercially benefit from the confusion generated by the strong similarity between the domains at issue and Complainant’s NAMECHEAP mark.
    9. Respondent’s registration and use of the domains to specifically target Internet users who are attempting to reach Complainant but inadvertently misspell the domain name is evidence in and of itself of bad faith.
    10. Respondent had knowledge of the famous NAMECHEAP mark.
    11. Respondent registered the <namechea.com> domain name on April 28, 2011; Respondent registered the <naecheap.com> domain name on June 1, 2011; Respondent registered the <nameceap.com> domain name on May 18, 2008.

 

B. Respondent

Respondent failed to submit a response in this proceeding.

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Based upon the record, the Panel finds that the named Respondents are effectively controlled by the same person or entity.

 

FINDINGS

Complainant holds trademark rights for the NAMECHEAP mark.  Respondent’s domain names are confusingly similar to Complainant’s NAMECHEAP mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <namechea.com>, <naecheap.com>, and <nameceap.com> domain names, and that Respondent registered and uses the domain names in 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 has provided evidence that it is the owner of trademark registrations with the USPTO for the NAMECHEAP mark (Reg. No. 4,213,990, filed February 29, 2012, registered September 25, 2012); and for the NAMECHEAP.COM mark (Reg. No. 3,622,358, filed September 26, 2008, registered May 19, 2009).  The Panel finds that although Respondent appears to reside within China, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it demonstrates rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the NAMECHEAP and NAMECHEAP.COM marks with the USPTO sufficiently establishes its rights in the marks under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).

 

Although Complainant’s NAMECHEAP.COM mark was registered on May 19, 2009,  Policy ¶ 4(a)(i) states that Complainant’s rights in the mark date back to Complainant’s filing date of September 26, 2008. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Even though Respondent registered its <nameceap.com> domain name a year before Complainant registered its NAMECHEAP.COM mark, Policy ¶ 4(a)(i) does not require that Complainant register its mark with a trademark agency, so long as it demonstrates common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

 

Complainant first used its NAMECHEAP.COM mark in commerce on November 9, 2000, according to Complainant’s USPTO registration for the mark. The record indicates that Complainant launched its company in 2000, and has since become an industry leader in offering competitively-priced domain name registrations. The record indicates that Complainant registered the domain name <namecheap.com> on August 11, 2000, built out its website, and has conducted its business activity from that web address since that time. Complainant contends that it has devoted considerable funds towards the promotion of its brand and name; specifically, it has engaged in Google advertising services, established Twitter and Facebook promotional campaigns, and has developed and aired web-based videos promoting the NAMECHEAP.COM mark as well as the services of Complainant associated therewith.  On this uncontradicted record, the Panel concludes that Respondent has established secondary meaning in its NAMECHEAP.COM mark, proving common law rights in the mark under Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Therefore, the Panel concludes that Complainant has sufficiently established rights in the NAMECHEAP.COM mark pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <namechea.com>, <naecheap.com>, and <nameceap.com> domain names are confusingly similar to Complainant’s NAMECHEAP.COM mark because each domain name contains a misspelled version of the mark. The Panel holds that Respondent’s misspelling of Complainant’s mark in the disputed domain names creates confusing similarity with the mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Therefore, the Panel finds that Respondent’s <namechea.com>, <naecheap.com>, and <nameceap.com> domain names are confusingly similar to Complainant’s NAMECHEAP.COM mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant contends that Respondent is not commonly known by the <namechea.com>, <naecheap.com>, and <nameceap.com> domain names. Complainant argues that it has not given Respondent permission to use its NAMECHEAP.COM mark in any way. Complainant contends that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Complainant alleges that the WHOIS information merely identifies Respondent as “duanxiangying / laiqiang / duanfuquan.” Id.  Accordingly, the Panel determines that Respondent is not commonly known by the <namechea.com>, <naecheap.com>, or <nameceap.com> domain name under Policy ¶ 4(c)(ii). See 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).

 

Complainant asserts that Respondent provides links and advertisements for competing website hosting and domain name registration services through its <namechea.com>, <naecheap.com>, and <nameceap.com> domain names. Complainant claims that some of the links made available through Respondent’s domain names advertise links titled “website hosting,” “domain name registration,” “buy a domain,” “GoDaddy # 1 domain names,” and “domain name.” Complainant contends that Respondent’s domain names are used to redirect traffic to Complainant’s direct competitors, each of which offer similar goods and services as Complainant. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel held that “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).” Consequently, the Panel finds that Respondent is not using the <namechea.com>, <naecheap.com>, and <nameceap.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant alleges that Respondent registered the domains which all contain misspelled versions of Complainant’s NAMECHEAP mark. The Panel notes that Respondent uses Complainant’s NAMECHEAP.COM mark in its domain names and simply omits the letter “p,” “m,” or “h.” In Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), the panel concluded that by registering the <microssoft.com> domain name, respondent had “engaged in typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).” Thus, the Panel holds that Respondent has engaged in typosquatting, showing that Respondent has no rights or legitimate interests in the <namechea.com>, <naecheap.com>, or <nameceap.com> domain name under Policy ¶ 4(a)(ii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent’s <namechea.com>, <naecheap.com>, and <nameceap.com> domain names are used to redirect traffic to Complainant’s competitors, such as <godaddy.com>, Network Solutions, or <buydomains.com>. Complainant claims that Respondent is purposefully diverting individuals seeking to reach Complainant. Thus, the Panel finds that Respondent’s use of the <namechea.com>, <naecheap.com>, and <nameceap.com> domain names disrupts Complainant’s legitimate business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant asserts that Respondent’s <namechea.com>, <naecheap.com>, and <nameceap.com> domain names, which link to Complainant’s competitors, represent an attempt by Respondent to commercially benefit from the confusion generated by the strong similarity between the domains at issue and Complainant’s NAMECHEAP mark. Complainant argues that Respondent uses its disputed domain names to redirect traffic from Complainant to Complainant’s competitors, such as <godaddy.com>, Network Solutions, or <buydomains.com>.  Complainant alleges that Respondent presumably receives click-through fees from Internet users who pass through Respondent’s websites and sponsored links in their quest to reach the authentic site of Complainant. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that “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.’” Accordingly, the Panel holds that Respondent is using the <namechea.com>, <naecheap.com>, and <nameceap.com> domain names in bad faith under Policy ¶ 4(b)(iv).

 

Complainant alleges that Respondent’s registration and use of the <namechea.com>, <naecheap.com>, and <nameceap.com> domain names to specifically target Internet users who are attempting to reach Complainant but inadvertently misspell the domain name provides evidence in and of itself of bad faith. The Panel notes that Respondent uses Complainant’s NAMECHEAP.COM mark in its disputed domain names and simply removes the letter “p,” “m,” or “h.” The Panel therefore determines that Respondent has engaged in typosquatting, demonstrating bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

Complainant claims that Respondent had knowledge of the famous NAMECHEAP.COM mark at the time Respondent registered the disputed domain names. Complainant argues that each of the disputed domain names was registered at least six years after the establishment of the NAMECHEAP brand by Complainant. Complainant asserts that Respondent registered its domain names well after Complainant first used the mark in 2000. Complainant further contends that each domain is re-registered each year. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights at the time Respondent registered the disputed domain names. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <namechea.com>, <naecheap.com>, and <nameceap.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  October 31, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page