The Boeing Company v. ting feng li / li ting feng
Claim Number: FA1508001634978
Complainant is The Boeing Company (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is ting feng li / li ting feng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fly767.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically August 25, 2015; the Forum received payment August 25, 2015.
On August 27, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <fly767.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited verified that Respondent is bound by the HiChina Zhicheng Technology Limited registration agreement and 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 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@fly767.com. Also on September 1, 2015, the 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 September 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in this Proceeding:
Complainant uses the 767 mark in connection with its Boeing 767 commercial aircraft. Complainant holds United States Patent and Trademark (“USPTO”) registrations, which demonstrate rights in the mark (e.g., Registry No. 1,290,291, registered Aug. 14, 1984). See Compl., at Attached Ex. D. Respondent appended the term “fly,” which is descriptive of Complainant’s business, and the generic top-level domain (“gTLD”) “.com” to Complainant’s fully incorporated mark, producing confusing similarity under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests relative to the <fly767.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not given Respondent authorization, license, or permission to register domain names incorporating the 767 mark. Further, Respondent has not used the <fly767.com> domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent failed to make any active use of the website, as shown in Complainant’s Attached Exhibit E.
Respondent registered and used the <fly767.com> domain name in bad faith. Under a non-exclusive analysis of bad faith under Policy ¶ 4(a)(iii), Respondent had actual knowledge of Complainant’s rights in the mark and inactively or passively held the domain name in bad faith.
B. Respondent’s Allegations in this Proceeding:
The Panel notes that Respondent failed to submit a response in this proceeding. The Panel also notes that Respondent registered the <fly767.com> domain name August 21, 2009, some twenty-five years after Complainant’s registration of the mark.
Supported Language Request:
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors that previous panels found compelling were: WHOIS information establishes that Respondent is in a country that would have a familiarity with the English language, a trademark registration with an entity that shows an understanding of the English language, and any other evidence (or lack thereof) suggesting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Therefore, the Panel chooses the following clause after reviewing the applicable rules regarding the proceedings of the UDRP:
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant established that it has legal rights and legitimate interests in the protected mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or the domain name containing that mark in its entirety along with descriptive language in Complainant’s commercial area.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and passively held the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the 767 mark in connection with its Boeing 767 commercial aircraft. Complainant has shown that it holds United States Patent and Trademark (“USPTO”) registrations, which demonstrate rights in the mark (e.g., Registry No. 1,290,291, registered Aug. 14, 1984). See Compl., at Attached Ex. D. While Respondent reportedly resides in China, the Panel finds this to be of little significance given Complainant’s USPTO registration. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Nat. Arb. Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Next, Complainant argues that since Respondent appended the term “fly,” which is descriptive of Complainant’s business, and the gTLD “.com” to Complainant’s fully incorporated mark, the domain name is confusingly similar under Policy ¶ 4(a)(i) to Complainant’s protected mark. Other Panels agree that such alterations are insufficient in distinguishing a domain name from a mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Name, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, this Panel finds that the <fly767.com> domain name is confusingly similar to the 767 mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 such 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 has no rights or legitimate interests in respect of the <fly767.com> domain name. In arguing this point, Complainant notes that Respondent is not commonly known by the disputed domain name and Complainant has not given Respondent authorization, license, or permission to register domain names incorporating the 767 mark. While Respondent failed to submit any evidence to the record, Complainant’s contentions and proof must be sufficient to permit the Panel to find that Respondent has no rights or interests. This Panel elects to find that, based on the proof, Respondent is not commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent has not used the <fly767.com> domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Complainant asserts that Respondent failed to make any active use of the website, evidenced by Complainant’s Attached Exhibit E. Panels consistently find that failing to make an active use of a disputed domain name cannot effectively demonstrate Policy ¶¶ 4(c)(i) or (iii) rights or legitimate interests, especially where a respondent makes no demonstration of use or that such use is anticipated. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)). Therefore, this Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the mark contained in its entirety within the disputed domain name and none in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b) concerning bad faith registration and use, but the Panel notes that these provisions are merely illustrative of bad faith, and Complainant may show bad faith by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant also contends that given the fame and notoriety of Complainant's 767 mark, it is inconceivable that Respondent could have registered the <fly767.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence to support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Last, Complainant argues that Respondent inactively or passively held the disputed domain name, which demonstrate Respondent’s bad faith under Policy ¶ 4(a)(iii). See Compl., at Attached Ex. E (failed attempt to access Respondent’s website). Panels have found that such inactive holding supports findings of bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). This Panel therefore finds that Respondent registered and inactively or passively held the disputed domain in bad faith, pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <fly767.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 12, 2015
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