EZQUEST, INC. v. BAORUI
Claim Number: FA1205001445631
Complainant is EZQUEST, INC. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is BAORUI (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ezq.com>, registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2012; the National Arbitration Forum received payment on May 24, 2012. The Complaint was received in both Chinese and English.
On May 25, 2012, Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp confirmed by e-mail to the National Arbitration Forum that the <ezq.com> domain name is registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp and that Respondent is the current registrant of the name. Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp has verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp 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 June 1, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 21, 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 firstname.lastname@example.org. Also on June 1, 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 June 27, 2012, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant has been using its EZQ mark online since December 24, 1996.
2. Individuals and those using Complainant’s products recognize Complainant’s mark as a distinctive identifier and associate the EZQ mark with Complainant.
3. Complainant associates the disputed domain name with its services by placing links to the disputed domain name on other websites across the Internet.
4. Complainant spends hundreds of thousands of dollars on “cost-per-click” advertising.
5. Complainant’s EZQ mark is famous and has acquired secondary meaning.
6. Complainant has common law trademark rights in the EZQ mark.
7. Respondent unlawfully converted and registered the <ezq.com> domain name which Complainant originally registered and held.
8. Respondent registered the <ezq.com> disputed domain name in bad faith by hi-jacking Complainant’s mark.
Respondent failed to submit a Response in this proceeding.
Complainant holds a common law trademark for the EZQ mark. Respondent did not submit a Response in this proceeding.
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.”).
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 alleges that it has common law rights in the EZQ mark. A complainant does not need to own a trademark registration with a trademark authority where secondary meaning in a given mark is established through extensive commercial use and common law rights have been established. 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)); see also 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).
Complainant further insists that it holds common law rights for its EZQ mark through an established secondary meaning. Complainant contends that it has been using the EZQ mark online since December 24, 1996 when it registered the <ezq.com> domain name, exclusively displaying its mark in its financial transactions as well as being recognized by the EZQ distinctive mark present on the <ezq.com> domain name’s resolving website. Complainant also provides evidence of its recognition by multiple magazines including: Cnet Review, PC Magazine, and Mac World Review. Complainant points out that it associates the <ezq.com> domain with its services by displaying links to the <ezq.com> domain on other websites across the internet. Complainant also alleges it spends hundreds of thousands of dollars on pay-per-click advertising on the internet using the EZQ mark and as a result of its peak sales years made as much as $12 million. Based on this evidence the Panel finds that Complainant holds common law rights in the EZQ mark because it has established a secondary meaning through continuous use of the mark. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Williams v. WhoisGuard Protected, FA 1043246 (Nat. Arb. Forum Sept. 11, 2007) (finding that a complainant had sufficiently established common law rights where the popularity of complainant’s website identical to complainant’s trademark had allowed complainant to generate substantial revenue from advertisements featured on the site).
Complainant asserts that the <ezq.com> domain name is confusingly similar to Complainant’s EZQ mark. Complainant contends that the <ezq.com> domain name completely encompasses Complainant’s EZQ mark with the addition of the generic top-level domain (“gTLD”) “.com.” These variations are insufficient to distinguish a disputed domain name from a given mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Based on the facts presented the Panel finds that the <ezq.com> domain name is identical to Complainant’s EZQ mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. 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 <ezq.com> domain name. Complainant states that Respondent lists no contact information in its registration in attempt to hide its identity and prevent legal liability for the theft of the <ezq.com> domain. The WHOIS information identifies “baorui” as the registrant. Therefore, the Panel finds that there is no evidence indicating that Respondent is commonly known by the <ezq.com> domain pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant asserts that Respondent stole and fraudulently registered the <ezq.com> domain name for its own commercial gain and is not making a legitimate noncommercial or fair use of the domain pursuant to Policy ¶4(c)(i) or ¶4(c)(iii). Complainant contends that it was the original registrant of the <ezq.com> domain which was registered on December 24, 1996. Complainant further asserts that Respondent hijacked the <ezq.com> domain and fraudulently transferred it. Complainant also claims that Respondent registered the <ezq.com> domain name in order to resell it, extort and bankrupt the Complainant, steal identities and banking information from Complainant’s customers, and deprive the Complainant of the use of the <ezq.com> domain name and its EZQ mark. Such use of a disputed domain name for commercial gain, constitutes a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Jayagopal v. Name Last, FA 1339030 (Nat. Arb. Forum Sept. 16, 2010) (finding that the respondent is not making 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) because the respondent “fraudulently hacked into [the complainant’s] account” and transferred ownership of the disputed domain name to the respondent, which the respondent then used to resolve to the complainant’s website); see also Pfizer Inc. v. Internet Gambiano Prods LLC., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was “clearly well-known” at the time of the respondent’s registration of the domain name the panel could infer that the respondent acted for the purpose of “capitalizing on the confusion created by the domain name’s similarity to the [m]ark”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
Complainant contends that it had prior ownership of the <ezq.com> domain name. Complainant provides the WHOIS information for <ezq.com> domain name from the point of its creation, listing the creation date as December 25, 1996 and the registrant as Complainant. Complainant asserts that on or about May 1, 2012, Respondent successfully “hacked” into Complainant’s GoDaddy account and transferred the <ezq.com> domain name to Respondent. Complainant states that it contacted GoDaddy to resolve the situation, however, GoDaddy was unable to do anything. Complainant argues that Respondent is attempting to unlawfully extract money from Complainant and/or steal identity and banking information. Hacking a complainant’s registration account is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Swaningson v. thu lins, FA 1264365 (Nat. Arb. Forum July 1, 2009) (holding Respondent’s illegal action of hacking Complainant’s registration account is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ezq.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 3, 2012
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