SICO, INC. v. kai sun / sun kai
Claim Number: FA1503001608976
Complainant is SICO, INC. (“Complainant”), represented by Dana P. Jozefczyk of Merchant & Gould, P.C., Colorado, USA. Respondent is kai sun / sun kai (“Respondent”), Tianjin, Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sicobuffet.com>, registered with Bizcn.com, Inc.
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 Forum electronically on March 11, 2015; the Forum received payment on March 11, 2015. The Complaint was received in both English and Chinese.
On March 13, 2015, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <sicobuffet.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 March 18, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 7, 2015 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@sicobuffet.com. Also on March 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
1. Complainant uses the SICO mark in connection with the manufacture and sale of folding and mobile furniture.
2. Complainant has registered the mark with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 748,458, registered April 23, 1963), which establishes rights in the mark.
3. Respondent’s <sicobuffet.com> domain name is confusingly similar to Complainant’s SICO mark because the domain name merely adds the descriptive word “buffet” and the generic top-level domain (“gTLD”) “.com” to the mark.
4. Respondent has no rights or legitimate interests in the <sicobuffet.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to register <sicobuffet.com> or any variant of the SICO mark. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <sicobuffet.com> domain name purports to sell products of Complainant’s competitors.
5. Respondent is using the <sicobuffet.com> domain name in bad faith. Respondent’s use to divert Internet users to competitors of Complainant constitutes disruption per Policy ¶ 4(b)(iii). Further, because Respondent’s <sicobuffet.com> domain name displays links to third party competitors of Complainant, Respondent is presumably profiting via pay-per-click links, demonstrating Policy ¶ 4(b)(iv) attraction for commercial gain.
6. Finally, Respondent had actual and/or constructive knowledge of Complainant’s SICO mark when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture of folding and mobile furniture.
2. Complainant has registered the SICO mark with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 748,458, registered April 23, 1963), which establishes rights in the mark.
3. The <sicobuffet.com> domain name was registered on December 22, 2014.It resolves to a website which purports to sell products of Complainant’s competitors.
LANGUAGE OF THE PROCEEDING
In this proceeding, the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. 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.
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 on which it can rely. Complainant uses the SICO mark in connection with the manufacture and sale of folding and mobile furniture. It submits that it registered the mark with the USTPO (e.g., Reg. No. 748,458, registered April 23, 1963) and argues that such registrations evince rights in the mark. Previous UDRP panels have decided that where a valid trademark registration is present, rights in the mark pursuant to Policy ¶ 4(a)(i) are established, even where Respondent operates in a different country. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also 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.”). Accordingly, the Panel finds that Complainant has rights in the SICO mark under Policy ¶ 4(a)(i), even though Respondent reportedly resides in China.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SICO trademark. Complainant argues that Respondent’s <sicobuffet.com> domain name is confusingly similar to Complainant’s SICO mark because the domain name merely adds the descriptive word “buffet” and the gTLD “.com” to the mark. Complainant asserts that it manufactures and sells buffets and the Panel accepts its evidence to that effect. See Compl., at Attached Ex. 7. Panels have agreed that confusing similarity under Policy ¶ 4(a)(i) has been present where, as in the present case, a respondent has incorporated a term descriptive of a complainant’s business practices into the domain name in dispute along with the “.com” gTLD. 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). Therefore, this Panel finds that Respondent’s <sicobuffet.com> domain name is confusingly similar to Complainant’s SICO 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 chosen to take Complainant’s SICO trademark and to use it in its domain name, adding only the generic word “buffet” , a word that does not negate a finding of confusing similarity;
(b) Respondent has then used the domain name to direct Internet users to a website which promotes products in competition with those of Complainant;
(c) Respondent engaged in these activities without the consent or
approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests
in the <sicobuffet.com> domain name. In arguing this, Complainant submits that it has never given Respondent authorization to register the <sicobuffet.com> domain name or any variation of the SICO mark. Further, the Panel notes at Complainant’s attached Exhibit 3, the relevant WHOIS information states that the registrant of record is “kai sun / sun kai.” The Panel also notes that the Respondent has failed to submit a Response in this proceeding to refute any of Complainant’s contentions. In light of the Respondent’s failure to add any additional information to the record for the Panel’s consideration, the Panel therefore finds no basis to find Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Next, Complainant argues that Respondent is not making a bona fide
offering of goods or services or a legitimate noncommercial or fair use because the <sicobuffet.com> domain name purports to sell products of Complainant’s competitors. The Panel notes that Complainant’s Exhibit 5 seems to display the resolving page of the disputed domain name and Complainant’s Exhibit 6 is said by Complainant to be the resolving page of one of Respondent’s click-through links associated with the <sicobuffet.com> domain name. Panels have found where a respondent has attempted to capitalize on the good will associated with a mark to gain financially via click-through links which capitalize on Internet users’ confusion by directing them to competitors of complainant, such use is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)). Therefore, the Panel holds that Respondent’s inclusion of click-through hyperlinks which resolve to third party competitors of Complainant constitutes neither a bona fide offering of goods or services per Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to 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 submits that Respondent’s <sicobuffet.com> domain name constitutes a bad faith disruption of Complainant’s business. The Panel notes that the resolving page of the disputed domain name is located at Complainant’s Exhibit 5, which purportedly links to the page displayed at Complainant’s Exhibit 6, which is alleged to be a competitor of Complainant’s. The Panel agrees with the panel in Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), which found 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). Therefore, the Panel finds that Respondent in this case has demonstrated bad faith pursuant to Policy ¶ 4(b)(iii).
Next, Complainant submits that Respondent has shown bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). Complainant contends that Respondent is using the SICO mark and representing itself as being engaged in similar business activities to Complainant, presumably for the purpose of making profit. Panels have found where a respondent diverted Internet users to a third party competitor of Complainant’s, such use demonstrates bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites offering services similar to the complainant’s services and merely took advantage of Internet user mistakes). Thus, the Panel finds that Respondent’s <sicobuffet.com> domain name shows bad faith under Policy ¶ 4(b)(iv).
Complainant also submits that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the SICO mark when it registered the disputed domain name. Complainant further argues that the advertisements displayed on Respondent’s <sicobuffet.com> domain name, which are advertisements for the same types of products offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. Panels have held that constructive knowledge is not sufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel agrees with Complainant regarding Respondent's actual knowledge, concluding therefore that Respondent registered the <sicobuffet.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
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 Complainant’s SICO trademark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <sicobuffet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
April 23, 2015
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