ABCya.com, L.L.C. v. Bui Thien Huong / Netlink
Claim Number: FA1511001649966
Complainant is ABCya.com, L.L.C. (“Complainant”), represented by Alexis E. Payne of Lewis Brisbois Bisgaard & Smith LLP, Illinois, USA. Respondent is Bui Thien Huong / Netlink (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <abcya10.com> and <abcya5.com>, registered with Name.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 November 25, 2015; the Forum received payment on November 25, 2015.
On November 25, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <abcya10.com>, <abcya5.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.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 November 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@abcya10.com, postmaster@abcya5.com. Also on November 30, 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 December 28, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for ABCYA.COM. The mark is used in connection with the sale of entertainment services, namely, providing online computer games.
2. The <abcya10.com> and <abcya5.com> domain names are confusingly similar to the ABCYA.COM trademark because the domain names contain the dominant portion of the mark, and only minor alterations have been made, such as adding the numerals “10” and “5.”
3. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s trademark in the domain names. Furthermore, the domain names are being used by Respondent to offer competing services, and therefore Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.
4. Respondent has engaged in bad faith registration and use of the domain names. Respondent has used the domain names in bad faith under Policy ¶ 4(b)(iii) by offering competing services at the resolving webpage. Respondent has also displayed bad faith use under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing entertainment services, namely online computer games, including educational computer games and online activities for elementary-aged students. (See print-outs from Complainant’s Website attached collectively as Annex. C.)
2. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for ABCYA.COM (e.g., Reg. No. 4,042,132, registered Oct. 18, 2011).
3. Respondent registered the <abcya10.com> domain name on September 20, 2015 and the <abcya5.com> domain name on May 21, 2015.
4.The domain names are being used by Respondent to offer competing services to those provided by Complainant, namely online games.
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 the domain names should be cancelled or transferred:
(1) the domain names 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 names; and
(3) the domain names have been registered and are 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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant owns a trademark registration with the USPTO for ABCYA.COM (e.g., Reg. No. 4,042,132, registered Oct. 18, 2011). The mark is used in connection with the sale of entertainment services, namely, providing online computer games. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark under the Policy. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ABCYA.COM mark. Complainant argues that the <abcya10.com> and <abcya5.com> domain names are confusingly similar to the ABCYA.COM trademark. Complainant notes that the domain names contain the dominant portion of the mark, and only minor alterations have been made, such as adding the numerals “10” and “5.” Prior panels have found the addition of numerals to a domain name containing the dominant portion of the trademark at issue to result in a confusing similarity. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar). Therefore, the Panel finds that the <abcya10.com> and <abcya5.com> domain names are confusingly similar to the ABCYA.COM trademark under 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 names 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 ABCYA.COM mark and to use it in its domain names, making only minor additions in the form of numerals;
(b) Respondent registered the <abcya10.com> domain name on September 20, 2015 and the <abcya5.com> domain name on May 21, 2015;
(c) Respondent has used the domain names to offer competing services to those provided by Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant asserts that Respondent is not commonly known by the <abcya10.com> and <abcya5.com> domain names, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s mark in domain names. The Panel notes that “Bui Thien Huong” is listed as the registrant of record for the disputed domain names. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). 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);
(f) Complainant argues that Respondent’s use of the <abcya10.com> and <abcya5.com> domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant contends that the domain names resolve to a webpage that offers competing services to those offered by Complainant. The Panel notes that the resolving webpage offers online games (see Compl., at Attached Ex. F), and that the “abcya.com” trademark is used in connection with the provision of online gaming services (see Compl., at Attached Ex. B). Past panels have declined to recognise respondents’ rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name was used to offer competing services. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Because the disputed domain names are used to offer the same types of services as those marketed under Complainant’s ABCYA.COM trademark, the Panel declines to recognize any rights of Respondent under Policy ¶¶ 4(c)(i) and (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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has used the <abcya10.com> and <abcya5.com> domain names in bad faith under Policy ¶ 4(b)(iii) by displaying competing services on the resolving webpages. The Panel again notes Complainant’s Exhibit F, which displays a screenshot of the resolving webpages. Prior panels have found bad faith under Policy ¶ 4(b)(iii) where the domain name was used to offer competing services. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant further contends that Respondent’s use of the disputed domain names amounts to bad faith under Policy ¶ 4(b)(iv) because Respondent is attempting to profit commercially from a likelihood of confusion by internet users. Complainant argues that a likelihood of confusion is present because the webpages that resolve from the disputed domain names offer the same services as those offered under Complainant’s ABCYA.COM trademark. Further, Complainant adds that Respondent is presumably profiting from this behavior. Again, Complainant’s Exhibit F displays a screenshot of the resolving webpages, which shows that online games are being offered. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name was used to offer competing services. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv).
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 <abcya10.com> and <abcya5.com> domain names using the ABCYA.COM mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them 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 <abcya10.com> and <abcya5.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 30, 2015
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