COST PLUS MANAGEMENT SERVICES v. Andy Chang / Cash Ventures Corp.
Claim Number: FA1612001705364
Complainant is COST PLUS MANAGEMENT SERVICES (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Andy Chang / Cash Ventures Corp. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <worldmarkrt.com> and <worldmarkwt.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2016; the Forum received payment on December 1, 2016. The Complaint was received in both Chinese and English.
On December 7, 2016, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the Forum that the <worldmarkrt.com> and <worldmarkwt.com> domain names are registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the names. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. 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 December 12, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 3, 2017 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@worldmarkrt.com, and postmaster@worldmarkwt.com. Also on December 12, 2016, 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 January 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has rights in the WORLD MARKET mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,347,302, registered May 2, 2000). Respondent’s domain names <worldmarkrt.com> and <worldmarkwt.com> are nearly identical and confusingly similar to the WORLD MARKET mark as the domain names differ only by the replacement of a single letter and the addition of the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent has not been commonly known by the disputed domain names, legitimately affiliated with Complainant, or otherwise given permission to use Complainant’s mark in a domain name. Further, Respondent’s use of the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business, is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Additionally, Respondent’s domain names are a clear example of typosquatting.
iii) The domain names should be considered as having been registered and used in bad faith. Respondent’s use of the disputed domain names to resolve to a website hosting advertisements in competition with Complainant’s business demonstrates bad faith disruption and competition. Respondent’s bad faith is shown through using the disputed domain names to operate a website that creates profit through mistaken association with Complainant’s marks. Respondent’s typosquatting behavior is also evidence of bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that <worldmarkrt.com> and <worldmarkwt.com> were registered on November 13, 2010 and December 9, 2010, respectively.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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, determines 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(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 (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 claims to have rights in the WORLD MARKET mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,347,302, registered May 2, 2000). Panels routinely find, and this Panel similarly finds, that registration of a mark with the USPTO is sufficient to demonstrate a registrant’s rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant next claims that Respondent’s domain names <worldmarkrt.com> and <worldmarkwt.com> are confusingly similar to the WORLD MARKET mark. Respondent’s domain names differ from the WORLD MARKET mark through replacement of the letter “e” in the mark with the letter “r” or “w” and addition of the gTLD “.com.” Panels have found that the addition and gTLDs to a mark in a domain name does not alleviate confusing similarity. See Leland Turner v. joseph derer, FA 1618086 (Forum June 25, 2015) (“The [<lelandturner.com>] Domain Name consists of the Complainant's unregistered mark LELAND TURNER plus the gTLD designation .com. The addition of the .com gTLD does not serve to distinguish the Domain Name from the Complainant's LELAND TURNER mark and the Panellist finds that this domain name is identical to a mark in which the Complainant has rights for the purpose of the Policy.”). Panels have also held that misspelling a mark in a domain name does not prevent a finding of confusing similarity. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The Panel concludes that Respondent’s <worldmarkrt.com> and <worldmarkwt.com> domain names are confusingly similar to the WORLD MARKET mark for purposes of Policy ¶ 4(a)(i).
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 (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 (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 contends that Respondent has not been commonly known by the disputed domain names, legitimately affiliated with Complainant, or otherwise given permission to use Complainant’s mark in a domain name. WHOIS information associated with the disputed domain names identifies Respondent as, “Andy Chang,” of the organization, “Cash Ventures Corp.” Prior panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information, a lack of affiliation with the owner of the mark used in a domain name, and a lack of evidence in the record to the contrary. See Reese v. Morgan, FA 917029 (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). Given that Respondent has not responded in this proceeding, the Panel finds that Respondent is not commonly known by the disputed domain names.
Complainant next contends that Respondent’s use of the disputed domain names to resolve to websites that host generic links to third-party websites which presumably generate Respondent click-through revenue is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain names resolve to websites that display various related links with titles such as, “www.worldmarket.com,” “Home Furniture store,” and “World Market.” Clicking on the link titled “www.worldmarket.com,” leads to a link to Complainant’s legitimate website as well as links to Complainant’s competitors such as <walmart.com>. Clicking on the link titled, “World Market,” leads to a list of links including a link to Complainant’s own website and competitors of Complainant. Panels have held that using another’s mark in a domain name to resolve to website hosting commercial links to a complainant’s own website and sites of Complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum August 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). The Panel finds that Respondent has not used the disputed domain names in a manner acceptable under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant also contends that Respondent’s typosquatting behavior evinces Respondent’s lack of rights or legitimate interests in the disputed domain names. Panels have held that slight misspellings of marks in domain names may show typosquatting and prevent a respondent from having rights or legitimate interests in a domain name. See Internet Movie Database, Inc. v. Temme, FA 449837 (Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark). The Panel finds that Respondent is typosquatting using the disputed domain names, and thus it finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent’s use of the disputed domain names to resolve to a website hosting advertisements in competition with Complainant’s business demonstrates bad faith disruption and competition. As stated above, Respondent’s domain names resolve to websites that are used to host “related links” that when clicked display links to Complainant’s website and websites of Complainant’s competitors. Panels have found bad faith where a respondent used a disputed domain name confusingly similar to another’s mark for the purpose of displaying commercial links related to the business of the owner of the mark. See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel finds that Respondent’s use of the domain names demonstrates bad faith competition and disruption pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s bad faith is shown through using the disputed domain names to operate a website that creates profit through mistaken association with Complainant’s marks. Again, Respondent’s domain names resolve to websites that display links to Complainant and Complainant’s competitors. Panels have found bad faith confusion and attraction for commercial gain where a confusingly similar domain name was used to commercially profit from association with a complainant’s mark. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent’s typosquatting behavior is also evidence of bad faith. Panels have found bad faith based on typosquatting where a respondent intentionally registered a domain name because the domain name was a slight misspelling of another’s mark. See Finish Line, Inc. and its subsidiary Spike’s Holdings, Inc. v. XU SHUAI WEI / XUSHUAIWEI, FA1409001577968 (Forum October 9, 2014) (“The <finishlne.com> domain name is a typosquatted version of the FINISH LINE mark, which further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). The Panel finds that Respondent’s typosquatting behavior demonstrates bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that <worldmarkrt.com> and <worldmarkwt.com> be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 25, 2017
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