Azuma Leasing CT, LP v. Pham Dinh Nhut
Claim Number: FA1309001521765
Complainant is Azuma Leasing CT, LP (“Complainant”), represented by John A. Thomas of Glast, Phillips & Murray, P.C., Texas, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <azumaleasing.com>, registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2013; the National Arbitration Forum received payment on October 1, 2013. The Complaint was received in both Vietnamese and English.
On October 2, 2013, APRIL SEA INFORMATION TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <azumaleasing.com> domain name is registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. APRIL SEA INFORMATION TECHNOLOGY CORPORATION has verified that Respondent is bound by the APRIL SEA INFORMATION TECHNOLOGY CORPORATION 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 October 7, 2013, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of October 28, 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@azumaleasing.com. Also on October 7, 2013, the Vietnamese 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 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Language of the Proceedings
The Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
1. Complainant’s business rents household furnishings, particularly appliances, to individuals.
2. Complainant began using the AZUMA mark in 1993 and has continually used it since that date in correlation with its household furnishings rentals.
3. Complainant has rights in the AZUMA mark through its registration with the United States Patent and Trademark Office (“USPTO”);
a. (Reg. No. 3,479,885 registered August 5, 2008 filed December 13, 2007).
4. Complainant has acquired common law rights in the AZUMA mark through its use and promotions throughout the United States.
a. Complainant registered its official domain name located at <azuma.com> on April 2, 1998.
b. Respondent created the <azumaleasing.com> domain name on August 27, 2001.
5. Respondent’s <azumaleasing.com> domain name is identical to Complainant’s AZUMA mark.
6. Respondent has no rights or legitimate interests in the <azumaleasing.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not affiliated with Complainant, and Complainant did not give Respondent permission to use Complainant’s AZUMA mark.
c. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. The website resolving from Respondent’s disputed domain name redirects Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant.
d. Respondent registered and is using the <azumaleasing.com> domain name in bad faith.
i. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s resolving website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent failed to submit a response in this proceeding.
Complainant, Azuma Leasing CT, LP, rents household furnishings, particularly appliances, to individuals. Complainant has registered the AZUMA mark with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 3,479,885 registered August 5, 2008 filed December 13, 2007).
Respondent, Pham Dinh Nhut, registered the <azumaleasing.com> domain name on August 27, 2001. The website resolving from Respondent’s disputed domain name redirects Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant.
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 has rights in the AZUMA mark under Policy ¶ 4(a)(i) through registration with the USPTO (Reg. No. 3,479,885 registered August 5, 2008 filed December 13, 2007). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). To establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Based on Complainant’s registration with the USPTO, the Panel finds that Complianant has rights in the AZUMA mark under Policy ¶ 4(a)(i) dating back to the application filing date of December 13, 2007. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel notes, however, that Respondent’s registration date of August 27, 2001 for the <azumaleasing.com> domain name predates Complainant’s filing date with the USPTO of December 13, 2007.
Complainant argues that it has common law rights in the AZUMA mark under Policy ¶ 4(a)(i). Complainant argues that it began using the AZUMA mark in 1993, as stated on Complainant’s USPTO registration, and has used the mark continuously since that date in connection with its rental business. Complainant states that Complainant registered its official domain name located at <azuma.com> on April 2, 1998. Complainant states that it has acquired extensive common law rights in the AZUMA mark through its use and promotions throughout the United States. However, Complainant has failed to submit evidence of extensive and continuous use sufficient as to identify the goods or services specified by the trademark owner. See Chandler Horsley v. Fundacion Private Whois / Domain Administrator, FA 1497825 (Nat. Arb. Forum June 12, 2013) (“The common law rights may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner.”). Relevant evidence of secondary meaning includes sales income produced by the trademark and advertisement and media recognition. Id. Complainant’s one page Exhibit C showing the states in which Complainant conducts its business in 2013 is insufficient to show secondary meaning prior to August 27, 2001.
Complainant contends that Respondent’s <azumaleasing.com> domain name is identical to Complainant’s AZUMA mark under Policy ¶ 4(a)(i). Complainant argues that Respondent adds the descriptive word “leasing” to Complainant’s AZUMA mark. Respondent also adds the generic top-level domain (“gTLD”) “.com.” Variations such as adding descriptive words and gTLDs indicate that a disputed domain name is confusingly similar to a complainant’s registered mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds that Respondent’s <azumaleasing.com> domain name is confusingly similar to Complainant’s AZUMA mark under 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).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain under Policy ¶ 4(c)(ii). Complainant contends that Respondent is not affiliated with Complainant and Complainant did not give Respondent permission to use Complainant’s AZUMA mark. The WHOIS information for the <azumaleasing.com> domain name lists “Pham Dinh Nhut” as registrant. Previous panels have found that a respondent was not commonly known by a domain name where there was no indication on the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has no rights or legitimate interests in the <azumaleasing.com> domain name because it is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant claims that Respondent uses the disputed domain name to redirect Internet users to a website featuring generic hyperlinks to third-party websites, some of which compete with Complainant. Some of the links featured on Respondent’s resolving website include, “AZUMA Washer/Dryer Rental,” “Conn’s Washer Sale,” “Washer & Dryer Rentals,” “Rent A Washer & Dryer,” “Azuma Reviews,” and “Washing Machine Rental.” Complainant further contends that Respondent is collecting revenue from its use of the <azumaleasing.com> domain name. Previous UDRP panels have found that featuring a series of links to competing third-party websites, and gaining revenue from the links, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.
Since Respondent registered the <azumaleasing.com> domain name before Complainant established rights in the domain name, “the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.1. Accordingly, Complainant has failed to satisfy Policy 4(a)(iii).
Complainant having failed to establish the third element required under the ICANN Policy, the Panel concludes that relief shall be Denied.
Accordingly, it is Ordered that the <azumaleasing.com> domain name remain with Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 13, 2013
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