Quirky, Inc. v. yu zhiyuan / zhiyuan yu
Claim Number: FA1401001537008
Complainant is Quirky, Inc. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is yu zhiyuan / zhiyuan yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guaiky.com>, registered with SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2014; the National Arbitration Forum received payment on January 2, 2014. The Complaint was submitted in both Chinese and English.
On January 2, 2014, SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <guaiky.com> domain name is registered with SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD. and that Respondent is the current registrant of the name. SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD. has verified that Respondent is bound by the SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT 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 January 3, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 23, 2014 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@guaiky.com. Also on January 3, 2014, 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 January 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <guaiky.com> domain name is confusingly similar to Complainant’s QUIRKY mark.
2. Respondent does not have any rights or legitimate interests in the <guaiky.com> domain name.
3. Respondent registered and uses the <guaiky.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for ITS QUIRKY mark (e.g., Reg. No. 3,960,507, registered May 17, 2011), used in connection with research, development, design, and engineering services. Complainant is also the owner of a trademark registration with China’s State Administration for Industry and Commerce (“SAIC”) for the QUIRKY mark (Reg. No. G1104018, registered November 2, 2011).
Respondent registered the <guaiky.com> domain name on September 26, 2013, and uses it for a website that falsely suggests that the website is maintained by, sponsored by, or affiliated with Complainant and to “phish” for personal information from Internet users.
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.”).
The Panel finds that Complainant’s registration of its QUIRKY mark with the USPTO and China’s SAIC sufficiently proves its rights in the 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 <guaiky.com> domain name uses Complainant’s QUIRKY mark but for changing a few letters. The Panel finds that Respondent’s misspelling of Complainant’s QUIRKY mark does not distinguish the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Further, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to an analysis under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Thus, the Panel finds that Respondent’s <guaiky.com> domain name is confusingly similar to Complainant’s QUIRKY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <guaiky.com> domain name, is not a licensee of Complainant, and has never been authorized by Complainant to register the <guaiky.com> domain name. According to the WHOIS information, the registrant of the disputed domain name is “yu zhiyuan / zhiyuan yu.” Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 alleges that, in the website at the disputed domain name, Respondent seeks to impersonate Complainant and mislead consumers into mistakenly believing that the website and purported services are somehow affiliated with or sponsored by Complainant. The Panel notes that Respondent’s <guaiky.com> domain name resolves to a Chinese language website that is nearly identical to Complainant’s own website. In Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007), the panel held that “[b]ecause respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Thus, the Panel finds that Respondent’s use of the <guaiky.com> domain name to attempt to pass itself off as Complainant is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent’s website also invites unsuspecting consumers to submit personal information to Respondent. Prior panels have determined that a respondent’s use of a disputed domain name to phish for Internet users’ private information shows no rights or legitimate interests in the disputed domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel again notes that Respondent’s <guaiky.com> domain name links to a Chinese language website that is nearly identical to Complainant’s own website and finds that Respondent’s attempt to pass itself off as Complainant demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel also found that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.”
Respondent’s use of the <guaiky.com> domain name to engage in “phishing,” by encouraging Internet users to disclose personal information to Respondent under false pretenses, represents bad faith. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). Accordinlgy, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant claims that Respondent is presumed to have had constructive knowledge of Complainant’s mark at the time Respondent registered the <guaiky.com> domain name, based on Complainant’s registration of the marks throughout the world, including in the United States and China. The Panel agrees and also finds that, due to Respondent’s attempt to pass itself off as Complainant, Respondent had actual knowledge of the mark and Complainant's rights, bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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 that 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 <guaiky.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 4, 2014
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