First Coast Energy, L.L.P. v. yi zhang
Claim Number: FA1403001550180
Complainant is First Coast Energy, L.L.P. (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP, South Carolina, USA. Respondent is yi zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dailys.us>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2014; the National Arbitration Forum received a hard copy on March 25, 2014.
On March 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dailys.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 25, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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.
A. Complainant makes the following assertions:
1. Respondent’s <dailys.us> domain name, the domain name at issue, is confusingly similar to Complainant’s DAILYS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has used the DAILY’S mark in connection with a Florida-based convenience store operation since 2003. Complainant has registered the mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,900,193 filed Oct. 30, 2001, registered Nov. 2, 2004). Respondent’s <dailys.us> domain name is confusingly similar to the DAILY’S mark. The domain name differs only in that it removes the mark’s punctuation and affixes the country-code top-level domain (“ccTLD”) “.us” to the domain name.
Respondent is not otherwise commonly known by the <dailys.us> domain name. There is no evidence in the record to support such a finding. The WHOIS record lists the registrant of the domain name as “yi zhang.” Respondent is using the <dailys.us> domain name to promote third-party advertisements that are unrelated to Complainant’s convenience store operations.
Respondent appears to be placing the disputed domain name up for sale, which is evidence of bad faith. Respondent’s bad faith is evident in that it seeks to appropriate the DAILY’S mark in a confusingly similar domain name for purposes of creating a likelihood of confusion amongst the consuming public. Respondent’s bad faith is traceable to these domain names even if the parked content was placed by a third party.
The <dailys.us> domain name was registered on May 25, 2013.
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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant uses the DAILY’S mark in connection with a Florida-based convenience store operation since 2003. Complainant registered the mark with the USPTO (Reg. No. 2,900,193 filed Oct. 30, 2001, registered Nov. 2, 2004). This USPTO registration sufficiently evidences Complainant’s Policy ¶ 4(a)(i) rights in the mark, regardless of Respondent’s residence. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under [UDRP] Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Respondent’s <dailys.us> domain name is confusingly similar to the DAILY’S mark. Complainant notes the domain name differs only in that it removes the mark’s punctuation and affixes the ccTLD “.us” to the domain name. Respondent’s <dailys.us> domain name is identical to the DAILY’S mark under Policy ¶ 4(a)(i), as neither a ccTLD or the removal of punctuation are serious variations on the mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
As there is no evidence to suggest that Respondent has trademark rights to support its use of the disputed domain name, and Respondent has not responded to the Complaint, the Panel finds that Respondent has failed to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent is not otherwise commonly known by the <dailys.us> domain name. The WHOIS record lists the registrant of the domain name as “yi zhang.” In LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013), the panel rejected a finding that the respondent was “commonly known as” the disputed domain name when the record provided no evidence of such an association. The Panel here finds that Respondent in the present case is not commonly known by the domain name under Policy ¶ 4(c)(iii).
Respondent is using the <dailys.us> domain name to promote third-party advertisements that are unrelated to Complainant’s convenience store operations. Such use of the <dailys.us> domain name to host various hyperlink advertisements is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See, e.g., Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent appears to be placing the disputed <dailys.us> domain name up for sale, which is evidence of bad faith. The Panel notes the domain name’s landing page includes a general prompt reading “Would you like to buy this domain? Learn More.” The Panel finds this conduct to be illustrative of Policy ¶ 4(b)(i) bad faith. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Moreover, Respondent’s bad faith is evident in that it seeks to appropriate the DAILY’S mark in the confusingly similar <dailys.us> domain name for purposes of creating a likelihood of confusion amongst the consuming public. The <dailys.us> domain name resolves to a parked website featuring various unrelated hyperlink advertisements. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panel agreed that there was a likelihood Internet users would be confused into believing the content of the disputed domain name was associated with the complainant. This Panel likewise agrees that Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith through a likelihood of confusion.
Respondent’s bad faith is traceable to these domain names even if the parked content was placed by a third party. Pursuant to Policy ¶ 4(a)(iii), it is Respondent and not the registrar, or any other third party, that is ultimately accountable for the materials on the domain name’s website. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked’ . . . for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees . . .”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dailys.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 24, 2014
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