Namecheap, Inc. v. bailing
Claim Number: FA1309001519128
Complainant is Namecheap, Inc. (“Complainant”), represented by Liz Wang of Rome & Associates, A.P.C., California, USA. Respondent is bailing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mamecheap.com>, registered with ENAME TECHNOLOGY CO., LTD.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received payment on September 11, 2013. The Complaint was submitted in both English and Chinese.
On September 12, 2013, ENAME TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <mamecheap.com> domain name is registered with ENAME TECHNOLOGY CO., LTD. and that Respondent is the current registrant of the name. 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 language 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@mamecheap.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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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 is conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following allegations:
i. Complainant owns the NAMECHEAP mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,213,990, filed February 29, 2012; registered September 25, 2012).
ii. Complainant owns the NAMECHEAP.COM mark through its USPTO registration (Reg. No. 3,622,358, filed September 26, 2008; registered May 19, 2009).
iii. Complainant uses the NAMECHEAP marks in connection with its web-based business activity, which includes computer services, hosting and maintaining an online web site for others to register, and managing and transferring domain names for use on a global computer network.
iv. Complainant has used the NAMECHEAP marks as early as 2000. Complainant began using the web address <namecheap.com> in 2000 to provide its services online.
v. Complainant has exerted great effort in advertising the NAMECHEAP mark. Specifically, Complainant has engaged Google advertising services, established Twitter and Facebook promotional campaigns, and has developed and aired web-based promotional videos.
vi. Complainant has become an industry leader in offering domain name registrations and related services. Complainant has in excess of 3 million domain registrations and 800,000 users.
i. Policy ¶ 4(a)(i)
1. The <mamecheap.com> domain name is confusingly similar to the NAMECHEAP mark. The domain name contains a misspelled version of the mark and adds the generic top-level domain (“gTLD”) “.com.” The disputed domain name consists of a substituted letter “m” for the letter “n.” The addition of a gTLD is not relevant to Policy ¶ 4(a)(i) because every domain name must have a gTLD.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use its NAMECHEAP mark in any way. The WHOIS record identifies “bailing” as the registrant of the disputed domain name.
2. Respondent’s use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The resolving website, which has recently been deactivated, offers a list of sponsored links and advertisements for competing website hosting and domain name registration services. See Annex H, which promotes links entitled “domain registration” and “website hosting.” Users landing at the disputed domain are captured by a direct competitor to Complainant identified as “Domain Kong.”
iii. Policy ¶ 4(a)(iii)
1. Respondent is diverting potential customers from Complainant by connecting Internet users to competing domain registration and web-hosting service providers through a domain name confusingly similar to Complainant’s mark. The resulting disruption of Complainant’s business is evidence of bad faith.
2. Respondent is attempting to commercially benefit from the confusion generated by the strong similarity between the disputed domain name and Complainant’s NAMECHEAP mark. Respondent presumably generates click-through fees from the promoted links.
3. Respondent’s bad faith registration is demonstrated by Respondent’s knowledge of Complainant’s rights in the mark at the time Respondent registered the disputed domain name.
4. Respondent’s typosquatting behavior is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a response in this proceeding. Respondent registered the disputed domain name on May 3, 2008.
Complainant established that it had rights in the marks contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent registered and used the disputed domain names in bad faith.
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 use the NAMECHEAP marks in connection with its web-based business activity, which includes computer services, hosting and maintaining an online web site for others to register, and managing and transferring domain names for use on a global computer network. Complainant claims to own the NAMECHEAP mark through its trademark registration with the USPTO (Reg. No. 4,213,990, filed February 29, 2012; registered September 25, 2012). Complainant also claims to own the NAMECHEAP.COM mark through its USPTO registration (Reg. No. 3,622,358, filed September 26, 2008; registered May 19, 2009). Previous panels have held that a USPTO registration for a given mark establishes a complainant’s rights in that mark dating back to the date of complainant’s trademark application. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel notes that Respondent’s May 3, 2008 registration of the disputed domain name predates Complainant’s earliest application for a USPTO registration. Previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i), however. Instead, a complainant may establish its rights in the mark through common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark.).
Previous panels have found that complainants may establish a common law trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. 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.”). Complainant urges that it has used the NAMECHEAP marks since as early as 2000. Complainant asserts that it began using the web address <namecheap.com> in 2000 to provide its services online. Further, Complainant contends that it has exerted great effort in advertising the NAMECHEAP mark. Specifically, Complainant stresses that it has engaged Google advertising services, established Twitter and Facebook promotional campaigns, and has developed and aired web-based promotional videos. Complainant argues that it has become an industry leader in offering domain name registrations and related services as demonstrated by its 3 million domain registrations and 800,000 users. The Panel finds that Complainant has established common law rights in the NAMECHEAP mark for the purposes of Policy ¶ 4(a)(i), as Complainant has used the mark in commerce since 2000, has exerted substantial efforts in advertisements and promotions, and has obtained a significant membership.
Complainant argues that the <mamecheap.com> domain name is confusingly similar to the NAMECHEAP mark. Complainant claims that the domain name contains a misspelled version of the mark and adds the gTLD “.com.” Complainant notes that the disputed domain name consists of a substituted letter “m” for the letter “n.” Complainant asserts that the addition of a gTLD is not relevant to Policy ¶ 4(a)(i) because every domain name must have a gTLD. Previous panels have consistently agreed with the rationale of Complainant’s analysis. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); 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 concludes that the <mamecheap.com> domain name is confusingly similar to the NAMECHEAP mark within the meaning of Policy ¶ 4(a)(i).
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 argues that Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use its NAMECHEAP mark in any way. Complainant points out the WHOIS record identifies “bailing” as the registrant of the disputed domain name. Respondent did not submit a response to refute Complainant’s aforementioned contentions. Based on the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant asserts that the resolving website, which Complainant notes has recently been deactivated, offered a list of sponsored links and advertisements for competing website hosting and domain name registration services. The Panel is directed to Complainant’s Annex H, which shows that Respondent’s webpage promotes links entitled “domain registration” and “website hosting.” Further, Complainant asserts that Internet users landing at the disputed domain are captured by a direct competitor to Complainant identified as “Domain Kong.” Previous panels have determined that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel concluded that using a confusingly similar domain name to divert Internet users to competing websites did not represent 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). In line with precedent, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
Complainant asserts that Respondent is diverting potential customers from Complainant by connecting Internet users to competing domain registration and web-hosting service providers through a domain name confusingly similar to Complainant’s mark. Complainant argues that the resulting disruption of its business is evidence of Respondent’s bad faith. Complainant has provided the Panel with evidence that the website resolving from the disputed domain name displays links to products and services that directly compete with Complainant’s business, namely, the screen shots from Annex H, which shows that Respondent’s webpage promotes links entitled “domain registration” and “website hosting,” and references “Domain Kong.” Therefore, the Panel finds evidence of bad faith registration and use of the <mamecheap.com> domain name pursuant to Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Complainant argues that Respondent is attempting to commercially benefit from the confusion generated by the strong similarity between the disputed domain name and Complainant’s NAMECHEAP mark. Complainant presumes that Respondent generates click-through fees from the promoted links. The Panel is reminded that Complainant provided evidence in Annex H that Respondent promoted links in competition with Complainant. Previous panels have made findings of bad faith under similar circumstances. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel wrote, “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.’” The Panel finds that Respondent’s attempt to commercially benefit from the confusion generated by the strong similarity of the disputed domain name to Complainant’s NAMECHEAP mark evinces bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s bad faith registration is further demonstrated by Respondent’s knowledge of Complainant’s rights in the NAMECHEAP mark at the time Respondent registered the <mamecheap.com> domain name. The Panel notes that although the date of the domain name’s registration predates Complainant’s federal trademark applications, Complainant alleges that it has used the NAMECHEAP mark since 2000, and that the mark has achieved a high degree of distinctiveness sufficient to charge Respondent with knowledge of Complainant’s rights in the mark. Further, Complainant points out it recently obtained judgment against the domain name at issue in a federal action in the Central District of California; however, Complainant’s requests to have the domain name transferred have been ignored. Complainant asserts that the action was initiated on May 3, 2012. As such, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark at the time of yearly renewal for the disputed domain name. As the Panel determines Respondent had actual knowledge of Complainant’s rights in the mark based on the name and contents of the disputed domain, the Panel finds evidence of bad faith under Policy ¶ 4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant argues that Respondent’s typosquatting behavior is further evidence of Respondent’s bad faith. Panels have consistently held that typosquatting is meant to take advantage of typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as Respondent diverts users who misspell Complainant’s mark to Respondent’s own website, in what the Panel considers to be a typosquatting scheme.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.
Accordingly, it is Ordered that the <mamecheap.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 18, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page