Smakdapp, Inc. v. xiao weihua / weihua xiao
Claim Number: FA1510001643319
Complainant is Smakdapp, Inc. (“Complainant”), represented by Dean W. Amburn of Howard & Howard Attorneys PLLC, Michigan, USA. Respondent is xiao weihua / weihua xiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bannersaver.net>, registered with HiChina Zhicheng Technology Limited.
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.
David L. Kreider, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2015; the Forum received payment on October 21, 2015.
On October 22, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <bannersaver.net> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 October 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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 email@example.com. Also on October 27, 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 23 November 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L.Kreider 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.
Complainant Smakdapp, Inc. (“Smakdapp”), Britten Banners, Inc. (“Britten Banners”) and Britten Studios, Inc. (“Britten Studios”) are commonly owned by Paul Britten (collectively the “Related Companies”). Mr. Britten allows Britten Banners and Britten Studios to use the BannerSaver trademark.
1. The domain name is identical to Complainant’s trademark
Respondent’s domain name is identical to Complainant’s registered trademark for BannerSaver, except for the use of the dot-net extension. The addition of the generic top-level domain ‘.net’ to a registered mark does not serve to distinguish the domain name from the registered mark. E.g., Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007)(“The mere addition of a generic top-level domain (‘gTLD’) ‘.com’ does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant therefore has met its burden under UDRP Paragraph 4(a)(i) of proving that the disputed domain name is identical to or confusingly similar to a trademark in which Complainant has rights.
2. Respondent has no rights or legitimate interest in respect of the disputed domain name
a. Respondent has not used the domain names in connection with a bona fide offering of goods or services.
Respondent is not affiliated with, sponsored by, or endorsed by Complainant. Respondent is not licensed or otherwise authorized to sell Complainant’s products including brackets for signs. Britten sells its own products including brackets for signs under the BannerSaver brand on its website www.BrittenStudios.com as redirected from www.BannerSaver.com.
Where a complainant has licensed and authorized affiliates as well as provides its own products bearing its mark, a respondent’s use would be in direct competition with the complainant and could not therefore be deemed engaged in a fair or legitimate non-commercial use of the domain name. E.g., Haas Automation, Inc. v. CNCLISTINGS, LLC / Brian Denny, No. FA 1104001385849 (June 15, 2011).
b. Respondent is not making a legitimate non-commercial or fair use of the domain name.
Respondent is a knockoff of Complainant’s products and branding. Respondent’s website is replete with instances of Respondent’s attempts to mislead users as to its association with Complainant and Complainant’s products. For example, on the Home page Respondent’s website makes the statement, “Bannersaver manufacture in China for 7 years. Good price, High quality. Is your ideal choice.”
Respondent’s Home page contains reference to the exact same BannerSaver
products being offered for sale by Complainant including brackets for signs. Further, on its website Respondent attempts to describe itself as “Banner Savers Of Professional Manufacturer”, rather than describing itself truthfully as having no relationship with Complainant or Complainant’s registered mark BannerSaver.
Respondent’s statement is willfully misleading and implies a relationship with Complainant. In addition, Respondent illicitly copies images from Complainant’s affiliated company website www.BrittenStudios.com, which is redirected from www.BannerSaver.com.
Respondent’s use of not only Complainant’s mark but also images on Complainant’s affiliated website shows willful intent to misappropriate Complainant’s intellectual property and associated good will.
Respondent’s use of Complainant’s mark does not meet the test for nominative fair use. Nominative fair use does not apply if the infringer used more of the mark than necessary or falsely suggested he was sponsored or endorsed by the trademark holder. Respondent does both of these things. Respondent does not merely advertise that it sells BannerSaver branded parts, it tries to make its website look like it is BannerSaver, or is closely affiliated with Complainant.
Accordingly, nominative fair use does not apply.
Therefore, Complainant has met its burden under UDRP Paragraph 4(a)(ii) of proving that Respondent has no rights or legitimate interests in the disputed domain name.
3. The domain name should be considered as having been registered and used in bad faith
Respondent is using the disputed domain name to attract Internet users to its website for commercial gain. Respondent’s use of the disputed domain name, along with its vague identification of its true identity and its attempt to disguise itself as “Banner Savers Of Professional Manufacturer” creates a likelihood of confusion with Complainant’s mark as to the source, affiliation, or endorsement of Respondent’s website or of the products it attempts to sell on that website. These facts are evidence of registration and use of the disputed domain name in bad faith.
Therefore, Complainant has met its burden under UDRP Paragraph 4(a)(iii) of proving that the domain name has been registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant requests that English be the language of these administrative proceedings, notwithstanding that the Registration Agreement is written in Chinese. UDRP Rules 10(b) and (c). Complainant argues as grounds that the website to which the disputed domain name resolves is entirely in English and that the Respondent is ‘availing itself of the benefits of using English to make sales in the U.S. through the infringing website using the domain in dispute’.
The Panel notes that Respondent’s website purports to claim copyright in the name of ‘Builter Advertising Equipment Co., Ltd.’ (‘Builter’) and that ‘Mr. Alfred Xiao’, is named as the ‘Manager’ of Builter. Skype and MSN instant messaging contact addresses for the Respondent, Xiao Weihua, are provided, along with an email address ‘Alfred@bannersaver.net’ utilizing the disputed domain name. The advertising text appearing above the ‘Builter’ names reads:
‘Builter Advertising Equipment Co., Ltd. is specialized in producing banner savers. We do it well. In fact, our high-quality products are appreciated by customers in the USA, Europe, Austria, Iran and so on’. (Emphasis supplied)
The Panel finds that the Respondent, Xiao Weihua, is also known as Alfred Xiao, and that operating under the Builter corporate name, Respondent is availing itself of the benefits of using English to make sales in the U.S., as well as Europe and other markets where English is commonly spoken, through the infringing website to which the disputed domain name resolves, as alleged by Complainant.
Under the above circumstances, especially where, as here, Respondent was given notice of these administrative proceedings in both Chinese and English, but nonetheless has failed to file a response, the Panel decides, exceptionally, that these proceedings shall be conducted in a language other than that of the Registration Agreement, e.g, the English language.
Quality of Evidence
‘Appendix C’ to the Complaint is a declaration of Complainant’s principal, Mr. Paul Britten (‘Declaration’). The Panel notes that a disinterested, adult third party has not attested the signature of ‘Paul Britten’ appearing on the Declaration, nor is the Declaration in the form of a sworn affidavit. The Declaration bears no date indicating when Mr. Britten signed it. Given its deficient legal form, the Panel considers that Complainant’s Declaration must be accorded considerably less weight as ‘evidence’ in these proceedings than would have been the case had the Declaration been executed with the appropriate legal formalities as an affidavit (the statement at par. 2 that the Declaration is based on the ‘personal knowledge’ of the declarant notwithstanding).
As will be shown below, however, the Panel finds that Complainant’s other evidence, and inferences to be reasonably drawn therefrom, are sufficient to establish Complainant’s case.
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 Respondent’s domain name, ‘bannersaver.net’, registered on 27 May 2014, is identical to Complainant’s registered trademark, which has been continuously used by Complainant in connection with its sale of brackets for signs since prior to the date of its registration of the trademark on 19 May 2009. The addition of the generic top-level domain ‘.net’ to a registered mark does not serve to distinguish the domain name from the registered mark.
Complainant seeks to establish by the Declaration that Respondent is unrelated to Complainant or Complainant’s ‘Related Companies’, and that Respondent is not licensed or authorized to use Complainant’s BannerSaver trademark. Par. 6 of the Declaration asserts that Complainant’s ‘Related Companies’ are unrelated to Respondent’s entity ‘Builtler’ (spelled ‘Builter’ where it appears on Respondent’s website).
In view of the other evidence proffered by Complainant, including screen shots of Respondent’s website containing numerous images and graphics that are virtually indistinguishable from the website of Complainant’s ‘Related Companies’, selling brackets for signs that appear to be identical to those marketed by Complainant through its ‘Related Companies’, the Panel finds that Complainant has made the requisite prima facie showing to satisfy UDRP ¶ 4(a)(ii), thereby shifting the burden to the Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Respondent has defaulted in these proceedings and has made no showing whatsoever.
The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to pass itself off as Complainant by advertising that it sells Complainant’s products and by dressing its website to create the misimpression that it is affiliated with Complainant. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bannersaver.net> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Panelist
Dated: 28 November 2015
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