Research Now Group, Inc. v. Pan Jing
Claim Number: FA1706001735345
Complainant is Research Now Group, Inc. (“Complainant”), represented by Denis V. Shamo of Baker & McKenzie LLP, Texas, USA. Respondent is Pan Jing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <researchnow.host>, <researchnow.top> and <researchnow.club>, registered with EJEE Group Holdings 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2017; the Forum received payment on June 9, 2017. The Complaint was submitted in both English and Chinese.
On June 12, 2017, EJEE Group Holdings Limited confirmed by e-mail to the Forum that the <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are registered with EJEE Group Holdings Limited and that Respondent is the current registrant of the names. EJEE Group Holdings Limited has verified that Respondent is bound by the EJEE Group Holdings 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 June 13, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 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@researchnow.host, postmaster@researchnow.top, and postmaster@researchnow.club. Also on June 13, 2017, the Chinese 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 July 10, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE- Language of the Proceedings
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.
A. Complainant
Complainant, a market research company, registered its RESEARCH NOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,025,122, registered Sept. 13, 2011), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a generic top-level domain (“gTLD”) to the fully incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its RESEARCH NOW mark in any fashion and Respondent is not commonly known by the disputed domain name. Further, Respondent has failed to make an active use of the disputed domain names’ resolving websites. An inactive resolving website cannot be construed as providing a bona fide offering of goods or services or a legitimate noncommercial or fair use of domain names under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the disputed domain names in bad faith. Respondent’s registration of three domain names that each fully incorporate Complainant’s mark and failure to make an active use of any of the domain names evidences bad faith. Furthermore, Respondent had constructive notice of Complainant’s rights in the RESEARCH NOW mark as a result of the mark’s registration in China, the United States, and many other jurisdictions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <researchnow.host>, <researchnow.top> and <researchnow.club> domain names.
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 contends it registered its RESEARCH NOW mark with the USPTO (e.g. Reg. No. 4025122, registered Sept. 13, 2011), and has rights in the mark under Policy ¶ 4(a)(i). A USPTO registration confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel finds that Complainant has rights in the RESEARCH NOW mark under Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name. See Vince Andrich v. AnonymousSpeech AnonymousSpeech, FA 1406333 (Forum Oct. 26, 2011) (finding confusing similarity per Policy ¶ 4(a)(i) as “Respondent’s <vinceandrich.net> domain name is composed of Complainant’s mark, without the space between words, combined with the gTLD “.net.” These changes do not distinguish the disputed domain name from Complainant’s VINCE ANDRICH mark.”). Here, Respondent has appended the gTLDs “.host,” “.top,” and “.club” to Complainant’s fully incorporated mark. Therefore, the Panel holds that the disputed domain names are confusingly similar to Complainant’s mark.
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims it has not licensed or otherwise authorized Respondent to use its RESEARCH NOW mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The disputed domain names’ WHOIS information list “PAN JING” as the registrant. Therefore, the Panel holds that Respondent is not commonly known by any of the <researchnow.host>, <researchnow.top> or <researchnow.club> domain names.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving webpages are inactive. Such use cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided screenshots of Respondent’s inactive webpages. Therefore, the Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration in the instant case by registering multiple domain names, which can evince bad faith under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Here, Respondent has registered three domain names that incorporate and are confusingly similar to Complainant’s mark. Therefore, the Panel finds that Respondent engaged in bad faith registration.
Complainant also argues that Respondent must have had constructive notice of Complainant’s rights in the RESEARCH NOW mark because Complainant registered the mark in China, the United States, and many other jurisdictions. However, mere constructive notice of a complainant’s rights in a mark is not considered sufficient to find bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). In order to knowledge of a complainants rights in a mark to be considered in the bad faith analysis, a respondent must have had actual knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the RESEARCH NOW mark and finds that Respondent registered the disputed domain names in bad faith.
Complainant further contends that Respondent is not making an active use of the disputed domain names’ resolving webpages. A respondent’s failure to make an active use of a disputed domain name’s resolving webpage can lead to an inference of bad faith registration and use. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). As noted previously, Complainant has provided screenshot evidence of the disputed domain names’ inactive resolving webpages. Based on this evidence, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED,
Accordingly, it is ORDERED that the <researchnow.host>, <researchnow.top> and <researchnow.club> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 14, 2017
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