RingCentral, Inc. v. wubiyan
Claim Number: FA1409001578763
Complainant is RingCentral, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is wubiyan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ringcentra.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2014; the National Arbitration Forum received payment on September 8, 2014. The Complaint was submitted in both English and Chinese.
On September 9, 2014, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <ringcentra.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 15, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@ringcentra.com. Also on September 15, 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 October 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions
Complainant has rights in the RINGCENTRAL mark via trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,302,115 registered Oct. 2, 2007). Complainant uses the RINGCENTAL mark for telecommunications services. The <ringcentra.com> domain name is confusingly similar to the RINGCENTRAL mark.
Respondent lacks rights in the name. Respondent is not commonly known by the disputed domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the <ringcentra.com> domain name resolves to a website featuring links to third-party companies, some of which compete with Complainant’s telecommunications services.
Respondent has engaged in bad faith use and registration. Respondent’s willingness to sell the disputed domain name suggests bad faith. In addition, Respondent’s reliance on competing links on the resolving page disrupts Complainant’s business, indicative of Policy ¶ 4(b)(iii) bad faith. Further, using these pay-per-click links, Respondent is impermissibly generating revenue in violation of Policy ¶ 4(b)(iv). Respondent has engaged in typosquatting, which further evinces bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. However, 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, concludes that the remainder of the proceedings may be conducted in English.
1.Complainant is a prominent United States company engaged in the provision of telecommunication services.
2. Complainant has rights in the RINGCENTRAL mark via trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,302,115 registered Oct. 2, 2007).
3. The <ringcentra.com> domain name was registered December 12, 2009.
4. The <ringcentra.com> domain name resolves to a website featuring links to third-party companies, some of which compete with Complainant’s telecommunications services.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights in the RINGCENTRAL mark via trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,302,115 registered Oct. 2, 2007). Complainant uses the RINGCENTAL mark for telecommunications services. The Panel agrees that a valid USPTO registration establishes rights in the mark for purposes of Policy ¶ 4(a)(i), and find that Complainant has met this initial showing. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RINGCENTRAL trademark. Complainant argues the <ringcentra.com> domain name is confusingly similar to the RINGCENTRAL mark. The Panel notes the domain name differs from the mark by the removal of the letter “l,” and the affixation of the generic top-level domain (“gTLD”) “.com.” Prior panels have found similar alterations insufficient to distinguish the name from the otherwise incorporated mark. For example, in Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006), the panel held that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com.” Accordingly, the Panel determines that the <ringcentra.com> domain name is confusingly similar to the RINGCENTRAL mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s RINGCENTRAL trademark and used it in its domain name, making only one spelling alteration, implying that the domain name is an official domain name of Complainant leading to an official website of Complainant;
(b) Respondent has then caused the domain name to resolve to a website featuring links to third-party companies, some of which compete with Complainant’s telecommunications services.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant avers Respondent is not commonly known by the disputed domain name. The Panel observes that the WHOIS identifies “wubiyan” as the registrant of record, which shows no indication that Respondent is known by the domain name. Based on the available evidence and absent a response claiming otherwise, the Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <ringcentra.com> name. 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);
(e) Further, Complainant argues Respondent is not using the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Complainant claims the <ringcentra.com> domain name resolves to a website featuring links to third-party companies, some of which compete with Complainant’s telecommunications services. The Panel sees that Complainant has included the disputed landing page as well as resolving pages, which feature such links as “Email Fax,” “Engagement Rings,” “Fax with Email – eFax,” and “Free Email Faxing.” See Compl., at Attached Ex. H. Prior panels have found Policy ¶¶ 4(c)(i) and (iii) do not extend to protect a respondent’s use of a disputed domain name to promote competing or unrelated services. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Consistent with prior decisions, the Panel finds Respondent’s use of the disputed domain name to feature links both in competition with Complainant and unrelated to Complainant does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s willingness to sell the disputed domain name suggests bad faith. See Compl., at Attached Ex. I. Previous panels have found general offers to sell constitute bad faith in certain circumstances. To illustrate, in CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), the panel wrote, “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.” As the Panel agrees that Respondent’s listing of the domain name for sale evinces bad faith, it finds evidence of bad faith under Policy ¶ 4(b)(i).
Second, Complainant argues that Respondent’s reliance on competing links on the resolving page disrupts Complainant’s business, and is therefore indicative of Policy ¶ 4(b)(iii) bad faith. The Panel recalls that the disputed domain name resolves to promote links including “Email Fax,” “Fax with Email – eFax,” and “Free Email Faxing.” See Compl., at Attached Ex. H. The Panel agrees that such links are competitive with Complainant’s own offerings in the telecommunications field, and therefore finds evidence of Policy ¶ 4(b)(iii) bad faith use and registration. 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)).
Third, Complainant also argues that by using such pay-per-click links via the resolving page, Respondent is impermissibly generating revenue in violation of Policy ¶ 4(b)(iv). The Panel recalls that Respondent features both competing and non-competing links on the resolving page. See Compl., at Attached Ex. H. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel concluded, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Here, the Panel agrees that Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith.
Fourth, Complainant argues Respondent has engaged in typosquatting, which further evinces bad faith. The Panel in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), while considering the resemblance of the <zonelarm.com> domain name to the ZONEALARM mark wrote, “Respondent’s registration and use of a 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).” At present, the Panel recalls the <ringcentra.com> domain name differs from the RINGCENTRAL mark by the removal of the single letter “l” from the end of the mark. As the Panel agrees that such behavior amounts to typosquatting, the Panel finds evidence of Policy ¶ 4(a)(iii) bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s RINGCENTRAL trademark and its subsequent use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ringcentra.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 10, 2014
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