Plain Green, LLC v. Wux Chen
Claim Number: FA1705001731279
Complainant is Plain Green, LLC (“Complainant”), represented by Peter T. Wakiyama, Pennsylvania, USA. Respondent is Wux Chen (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenloansplain.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2017; the Forum received payment on May 11, 2017.
On May 12, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <greenloansplain.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 May 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@greenloansplain.com. Also on May 15, 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 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the name and mark PLAIN GREEN, provides loans and cash advances to consumers via the Internet.
Complainant holds a registration for the PLAIN GREEN service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,214,941, registered September 25, 2012).
Respondent registered the domain name <greenloansplain.com> on or about November 24, 2011.
The domain name is confusingly similar to Complainant’s PLAIN GREEN mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use its PLAIN GREEN mark.
Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use.
For Respondent’s commercial gain, Respondent employs the domain name to divert to its website Internet users searching for Complainant’s website and associated services.
Respondent prominently displays Complainant’s PLAIN GREEN mark on its resolving website, thereby leading consumers to believe that the website is associated with Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name with actual knowledge of Complainant’s rights in the PLAIN GREEN mark.
Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the PLAIN GREEN service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark .... Due to Complainant’s … USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Thailand). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <greenloansplain.com> domain name is confusingly similar to Complainant’s PLAIN GREEN mark. The domain name contains the mark in its entirety, merely transposing the terms of the mark, and adding the generic term “loans,” which is descriptive of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain name from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i)).
See also Eastman Chem. Co. v. Patel, FA 524752 (Forum September 7, 2005):
Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, …, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
The last of these points derives from the fact that every domain name requires a Top Level Domain.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in the evidence any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <greenloansplain.com> domain name, and that Complainant has not authorized Respondent to use its PLAIN GREEN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Wux Chen,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), where the relevant WHOIS information named “Fred Wallace” as registrant of the domain name). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that, for commercial gain, Respondent uses the <greenloansplain.com> domain name to divert to its own website consumers searching for Complainant’s website and associated services, which website prominently displays Complainant’s PLAIN GREEN mark. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the contested domain name as provided in those sections of the Policy. See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (ForumJanuary 2, 2003) (finding that a respondent that inserted a UDRP complainant’s mark in a domain name which it used for its website in order to compete commercially with that complainant, had no rights to or legitimate interests in a domain name as provided in either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged <greenloansplain.com> domain name, which we have found to be confusingly similar to Complainant’s PLAIN GREEN mark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s sponsorship of or other affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO November 30, 2000) (finding bad faith registration and use of a domain name, under Policy ¶ 4(b)(iv), where a respondent's use of that domain name to resolve to a website at which services similar to those of a UDRP complainant were offered to Internet users, was likely to confuse such users into believing that that complainant was the source or sponsor of those services).
We are also convinced by the evidence that Respondent knew of Complainant and of its rights in the PLAIN GREEN mark when Respondent registered the <greenloansplain.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent had actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s … mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with [the business of] Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <greenloansplain.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 9, 2017
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