NYBEST Services, LLC v. Jun Zhu
Claim Number: FA1603001667008
Complainant is NYBEST Services, LLC (“Complainant”), represented by George R. McGuire of Bond, Schoeneck & King, PLLC, New York, USA. Respondent is Jun Zhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nybest.org>, registered with Network Solutions, Llc.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2016; the Forum received payment on March 23, 2016.
On March 23, 2016, Network Solutions, Llc confirmed by e-mail to the Forum that the <nybest.org> domain name is registered with Network Solutions, Llc and that Respondent is the current registrant of the name. Network Solutions, Llc has verified that Respondent is bound by the Network Solutions, Llc 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 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2016 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 March 24, 2016, 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 April 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Policy ¶ 4(a)(i)
Complainant has common law rights in the NYBEST mark dating back to December 3, 1999. Respondent’s <nybest.org> domain name is identical to the NYBEST mark because it contains the mark along with the generic top-level domain (“gTLD”) “.org.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <nybest.org> domain name. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website displays both identical content to that displayed on Complainant’s own website and unrelated content. In addition, Respondent lacks rights or legitimate interests in the <nybest.org> domain name because it acquired the domain from Complainant due to an erroneous lapse in registration status.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of being a serial domain name registrant. Respondent uses the <nybest.org> domain name in bad faith because the resolving website displays both identical content to that displayed on Complainant’s own website and unrelated content. Respondent registered the <nybest.org> domain name in bad faith because it acquired the domain from Complainant due to an erroneous lapse in registration status.
Respondent failed to submit a Response in this proceeding.
Complainant, NYBEST Services, LLC, has failed to show rights in the NYBEST mark.
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(f), 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.”).
Complainant does not claim to have rights in the NYBEST mark through registration with any trademark agency. Instead, Complainant claims to have common law rights in the NYBEST mark dating back to December 3, 1999. In order to have common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning can include longstanding use of a mark and ownership of a domain name identical to the mark. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK mark] in connection with its banking business, it has acquired rights under the common law.”). Complainant alleges that it has been operating as a non-profit offering services to New York State public school districts since 1999, when it acquired both the disputed domain name and the <nybest.net> domain name. However, Complainant has not submitted sufficient evidence to show seconary meaning. Therefore, Complainat has failed to show common law rights in the mark under Policy ¶ 4(a)(i). Since Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Complainant having not established the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nybest.org> domain name REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 29, 2016
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