BeenVerified, Inc. v. ZHANGWEI
Complainant is BeenVerified, Inc. (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is ZHANGWEI (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beenverified.co>, registered with Ourdomains Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2017; the Forum received payment on May 8, 2017.
On May 8, 2017, Ourdomains Limited confirmed by e-mail to the Forum that the <beenverified.co> domain name is registered with Ourdomains Limited and that Respondent is the current registrant of the name. Ourdomains Limited has verified that Respondent is bound by the Ourdomains 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 May 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@beenverified.co. Also on May 9, 2017, 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 June 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, BeenVerified, Inc. uses the BEENVERIFIED mark to provide and market services regarding background investigation and research.
Complainant has rights in the BEENVERIFIED mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,810,615, registered June 29, 2010).
Respondent’s <beenverified.co> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety, merely adding the country-code top-level domain “.co.”
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the BEENVERIFIED mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <beenverified.co> domain name for the purpose of passing off Complainant’s well known BEENVERIFIED mark. Respondent is using the domain name to divert Internet users to websites of third parties that provide background check services that are in direct competition with Complainant.
Respondent has registered and used the <beenverified.co> domain name in bad faith. Respondent is attempting to divert Internet users to commercially benefit. Secondly, Respondent has actual and constructive notice of Complainant’s mark. Finally, Respondent’s use of Complainant’s mark to form the disputed domain name as well as its display of the mark on the resolving webpage also constitutes passing off behavior.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BEENVERIFIED mark as evidenced by its registration of such mark with the USPTO.
Complainant’s rights in the BEENVERIFIED mark existed prior to Respondent’s registration of the at-issue domain name.
The at-issue domain name is identical to Complainant’s BEENVERIFIED trademark.
Respondent uses the at-issue domain name to address a website that displays third party links that reference services that compete with those services offered by Complainant. The website also displays Complainant’s trademark.
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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the BEENVERIFIED trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (ForumApr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
Respondent’s at-issue domain name contains Complainant’s entire BEENVERIFIED trademark followed by the country code top level domain name (ccTLD) “.co”. The addition of a necessary top-level domain name is irrelevant to Policy 4(a)(i) analysis, therefore the Panel finds that Respondent’s <beenverified.co> domain name is identical to Complainant’s BEENVERIFIED trademark. See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the <beenverified.co> domain name lists “Zhangwei” as its registrant. There is no evidence or even a claim before the Panel which otherwise suggests that Respondent is known by the at-issue domain. Therefore, the Panel concludes that Respondent is not commonly known by the <beenverified.co> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
Respondent uses the trademark identical <beenverified.co> domain name to address a website displaying not only Complainant’s trademark but also links to some of Complainant’s third party competitors. Such links include, but are not necessarily limited to, “Verified Background Check,” “Background Check,” and “Background Check Free.” Some links reference URLs for Complainant’s competitors like www.truthfindercom and www.securian.com, websites offering services in the field of background investigation and research which directly compete with Complainant. Using the trademark identical <beenverified.co> domain name in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, as mentioned above concerning Respondent’s rights and interest in the at-issue domain name Respondent’s <beenverified.co> website features third party links to some of Complainant’s competitors. Using the trademark identical domain name in this way demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Additionally, Respondent registered the <beenverified.co> domain name with actual knowledge of Complainant’s BEENVERIFIED trademark. Respondent’s knowledge of Complainant’s mark is inferred from the notoriety of Complainant’s trademark, from Respondent’s reference to Complainant’s trademark on the <beenverified.co> website, and from the website’s reference to Complainant’s competitors via the hyperlinks displayed thereon. Respondent’s actual knowledge of Complainant’s rights in the BEENVERIFIED mark prior to its registering the <beenverified.co> domain name further urges that Respondent registered and used the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beenverified.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 6, 2017
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