McDermott Will & Emery LLP v. Zou Yuan Hui
Claim Number: FA1709001749986
Complainant is McDermott Will & Emery LLP (“Complainant”), represented by Lynne M.J. Boisineau of McDermott Will & Emery LLP, California. Respondent is Zou Yuan Hui (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mwe.tech>, registered with Chengdu West Dimension Digital 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2017; the Forum received payment on September 20, 2017. The Complaint was submitted in both Chinese and English.
On September 21, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <mwe.tech> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital 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 September 26, 2017, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 16, 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@mwe.tech. Also on September 26, 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 October 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 provides international legal and law-related goods and services. Complainant uses the MWE mark in conjunction with its business practices. Complainant registered the MWE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,359,617, registered June 20, 2000). Complainant also registered the MWE mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5865528, registered Jan. 28, 2010). Additionally, Complainant has registered the MWE mark with government entities in Benelux, Korea, and the European Union. Respondent’s <mwe.tech> is identical to Complainant’s mark because it incorporates the mark in its entirety, merely adding the “.tech” generic top level domain (“gTLD”). The “.tech” gTLD is representative of Complainant’s technology law services.
Respondent does not have rights or legitimate interests in <mwe.tech>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the MWE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <mwe.tech> resolves to a website offering adult content and click-through-links to websites unrelated to Complainant’s business.
Respondent registered and is using <mwe.tech> in bad faith. Respondent is offering the domain name for sale in excess of its out-of-pocket costs to the general public. The disputed domain name attracts internet users to Respondent’s website, presumably for Respondent’s commercial gain. Respondent’s <mwe.tech> hosts links to adult content and third-party websites unrelated to Complainant’s business, from which Respondent is receiving click-through fees. Respondent registered <mwe.tech> with actual knowledge of Complainant and its rights to the MWE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is McDermott Will & Emery LLP of Chicago, IL, USA. Complainant is the owner of domestic and international registrations for the mark MWE, which it has used continuously since at least as early as 2000, in connection with its provision of legal services, training services and related publications.
Respondent is Zou Yuan Hui of the People’s Republic of China. Respondent’s registrar’s address is listed as Chengdu, China. The Panel notes that Respondent registered <mwe.tech> on or about May 4, 2017.
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.”).
Panel Note: Language of the Proceedings
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.
Complainant provides international legal and law-related goods and services. Complainant uses the MWE mark in conjunction with its business practices. Complainant registered the MWE mark with USPTO (Reg. No. 2,359,617, registered June 20, 2000). Complainant also registered the MWE mark with SAIC (Reg. No. 5865528, registered Jan. 28, 2010). Additionally, Complainant claims it has registered the MWE mark with government entities in Benelux, Korea, and the European Union. Past panels have found that registrations with government entities are sufficient to show rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel here finds that Complainant’s registrations with multiple government entities are sufficient to show rights in the MWE mark.
Complainant asserts that Respondent’s <mwe.tech> is identical to Complainant’s mark because it incorporates the mark in its entirety, merely adding the “.tech” gTLD. Complainant argues that the “.tech” gTLD is representative of its technology law services. “When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD) . . . then the [p]anel may find that the disputed domain name is identical to [c]omplainant’s mark.” Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017). Moreover, “[a]ppending a top-level domain that describes a complainant’s business adds to confusing similarity.” Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017). The Panel here finds that Respondent’s <mwe.tech> is identical to Complainant’s MWE mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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). Complainant has met this burden.
Complainant argues that Respondent does not have rights or legitimate interests in <mwe.tech>. Complainant indicates, by the WHOIS data, that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Zou Yuan Hui.” The respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). Because Respondent has failed to contest Complainant’s assertions, and the WHOIS contact does not reflect the disputed domain name, the Panel here finds that Respondent is not commonly known by the disputed domain name.
Complainant avers it has not authorized or licensed Respondent to use the MWE mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support, Complainant provides evidence that Respondent’s <mwe.tech> resolves to a website offering adult content and click-through-links to websites unrelated to Complainant’s business. “Respondent's use of a domain name confusingly similar to [c]omplainant’s mark to divert Internet users to websites unrelated to [c]omplainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003). Moreover, “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.” Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017). The Panel here finds that Respondent does not have rights or legitimate interests in <mwe.tech> under the Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant maintains that Respondent registered and is using <mwe.tech> in bad faith. Complainant asserts that Respondent is offering the domain name for sale in excess of its out-of-pocket costs to the general public. “A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).” Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015). As such, the Panel may determine that Respondent registered <mwe.tech> with the intent to sell it for profit evinces bad faith registration and use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Next, Complainant argues that the disputed domain name attracts internet users to Respondent’s website, presumably for Respondent’s commercial gain. Complainant asserts that Respondent’s <mwe.tech> hosts links to adult content and third-party websites unrelated to Complainant’s business, from which Respondent is receiving click-through fees. “Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.” Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003). Further, prior panels have found a respondent’s tarnishing use of the disputed domain name to redirect Internet users to adult-oriented websites is evidence that the domain name is being used in bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Forum Mar. 18, 2003). The Panel here finds that Respondent registered and is using <mwe.tech> in bad faith pursuant to Policy ¶¶ 4(a)(iii) and 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mwe.tech> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 2, 2017
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