ShipChain, Inc. v. 谢东东 / 谢东东
Claim Number: FA1805001785189
Complainant is ShipChain, Inc. (“Complainant”), represented by Liana W. Chen of KRONENBERGER ROSENFELD, LLP, California, USA. Respondent is 谢东东 / 谢东东 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shipchain.vip>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2018; the Forum received payment on May 4, 2018. The Complaint was submitted in both Chinese and English.
On May 8, 2018, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <shipchain.vip> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2018 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@shipchain.vip. Also on May 17, 2018, 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 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
SHIPCHAIN (Serial No. 87657410), filed October 24, 2017; IC 009, US 021 023 026 036 038 G&S: Computer software for smart contract technologies; Computer software for blockchain technologies; Computer software for logistics and freight management; Computer software platforms for logistics and freight management; Computer software platforms for smart contract technology; Computer software platforms for blockchain technology; IC 042, US 100 10 G&S: Platform as a service (PAAS) featuring computer software platforms for blockchain technology; Platform as a service (PAAS) featuring computer software platforms for smart contract technology; Platform as a service (PAAS) featuring computer software platforms for logistics and transportation management; Software as a service (SAAS) services featuring software for blockchain technology; Software as a service (SAAS) services featuring software for smart contract technologies; Software as a service (SAAS) services featuring software for logistics and transportation management. The trademark application is pending as of the filing of this Complaint.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds. Rule 3(b)(ix).
A. Summary of Facts
1. Complainant ShipChain’s Business and Use of SHIPCHAIN Mark
Founded in or around June 2017, Complainant ShipChain, Inc. (“ShipChain”) provides an integrated supply chain system using blockchain technology. In particular, ShipChain provides consumers worldwide with computer software and software platforms for smart contract technologies, blockchain technologies, logistics, freight management, and transportation management. Since its inception, ShipChain has offered its blockchain, logistics and freight/transportation management software in connection with its SHIPCHAIN mark, thereby fundamentally improving the efficiencies within the shipping and logistics industries.
ShipChain was incorporated in 2017 in Delaware, and the company’s principal place of business is in Greenville, South Carolina. Since its inception, ShipChain has been offering its software and platforms throughout the United States in connection with its SHIPCHAIN mark; ShipChain has also created partnerships around the globe and does business in South America, Asia, and Europe, also in connection with its SHIPCHAIN mark. Among other things, ShipChain offers its goods and services to consumers through ShipChain’s website at <ShipChain.io> (“Website”), which prominently features the SHIPCHAIN mark. ShipChain is also the registrant of the website at <ShipChain.com>, which redirects to ShipChain’s primary Website. ShipChain offers information about its business, goods, and services on its Website, including through a white paper about the company.
In October 2017, ShipChain filed an application for federal registration of its SHIPCHAIN mark (“Mark”) with the U.S. Patent and Trademark Office, Serial No. 87657410. The application is still pending as of the filing of this complaint.
Since November 2017, ShipChain has continuously marketed and sold its goods and services using the SHIPCHAIN Mark in commerce through various Internet and other channels. As limited examples, ShipChain has marketed and advertised its goods and services using the Mark through its own commercial Website and through social media, including on Facebook, Telegram, Twitter, LinkedIn, and Instagram; all of these uses prominently feature the SHIPCHAIN Mark. Moreover, since its formation, ShipChain has obtained wide notoriety for its innovative platform and services. As just a few examples, ShipChain has been featured in technology news resources and press releases, including on newswire.net, barcoding.com, huffingtonpost.com, influencive.com, ccn.com, newsbtc.com, and others.
As a result of ShipChain’s substantial marketing efforts and its high-quality goods and services, consumers have come to associate the SHIPCHAIN Mark with ShipChain and its goods and services. In particular, since 2017, ShipChain has expended millions of dollars on advertising and marketing its goods and services in connection with its SHIPCHAIN Mark. In addition, ShipChain pledged to raise $20 million for limited users by November 2017 and $10 million for unlimited public users by January 2018. As a result of these efforts, ShipChain has enjoyed prominent brand value, including from reaching out to partners and them looking up ShipChain.
2. History of Respondent and Disputed Domain
In March 2018, Respondent 谢东东/谢东东 dba Xie Dongdong dba Nexperian Holding Limited dba AliYun (“Respondent”) registered the domain name <ShipChain.vip> (“Disputed Domain”). Respondent is using the Disputed Domain to display an exact mirror image of ShipChain’s Website. In other words, Respondent is using the Disputed Domain to pose as and compete with ShipChain while using ShipChain’s Mark. The current WHOIS information for the Disputed Domain does not identify any business using the SHIPCHAIN Mark in connection with any legitimate offering of goods or services.
On information and belief, Respondent acquired and has been using the Disputed Domain to confuse and scam consumers, to pretend to be and compete with ShipChain, and to divert ShipChain’s customers to the Disputed Domain and take their money. Given that the website at the Disputed Domain is an identical copy of ShipChain’s Website, consumers have been confused as to the source and ownership of the Disputed Domain.
On information and belief, Respondent does not have a trademark registration for the mark SHIPCHAIN or any related marks. Complainant has never licensed the SHIPCHAIN Mark to Respondent or otherwise authorized Respondent to use its Mark.
In April 2018, ShipChain sent a demand letter to Respondent, notifying Respondent that the Disputed Domain was being used to display an infringing website in violation of ShipChain’s trademark and other rights. Respondent has not responded to ShipChain’s letter.
B. Language of Proceedings
Pursuant to Rule 11(a), the language of the proceedings shall be the language of the Registration Agreement, “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” See also Altria Grp., Inc. & Altria Grp. Distrib. Co. v. yu fan/fanyu, FA1607001683563 (Nat. Arb. Forum Aug. 18, 2016) (finding, where domain name <altria.vip> was registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn), registrant was bound by the registration agreement; concluding that proceedings could be conducted in English); Martin & C° v. Tian/Lan, D2016-1567 (WIPO Sept. 30, 2016) (accepting complaint in English when, inter alia, English is the most widely used language, the disputed domain was registered in Roman characters, and the complainant would have had to retain specialized and expensive translation services otherwise); All Saints Retail Ltd. v. Ya, D2016-1809 (WIPO Oct. 31, 2016) (finding use of English fair and not prejudicial).
These proceedings should be conducted in English. The registrar is Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn), and the registration agreement applies to Respondent. See Altria Grp., Inc. & Altria Grp. Distrib. Co. v. yu fan/fanyu, FA1607001683563 (Nat. Arb. Forum Aug. 18, 2016). Moreover, the Disputed Domain is being used to display an exact copy of ShipChain’s Website in English, English is the most widely used language, and ShipChain would need to retain specialized and expensive translation services if the proceedings were not conducted in English.
C. Legal Analysis
Paragraph 4(a) of the Policy requires a UDRP complainant to 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 the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
As outlined below, all three elements are satisfied, and the Disputed Domain should be transferred to ShipChain.
1. The Disputed Domain is identical and confusingly similar to a trademark in which ShipChain has rights. (Policy ¶4(a)(i).)
a) ShipChain has rights in the SHIPCHAIN Mark.
A complainant can establish trademark rights under ¶4(a)(i) by demonstrating either that the mark has been registered or that the mark has acquired secondary meaning. See Jim Butler Imports LLC and Jim Butler Chevrolet, Inc. v. Vickie Poucher, FA1007001334670 (Nat. Arb. Forum Aug. 31, 2010) (“The Panel finds that Complainant is not required to have a trademark registered with a governmental trademark authority in order to have rights in the mark so long as Complainant can establish sufficient secondary meaning in the mark to demonstrate common law rights.”); Zee TV USA, Inc. v. Siddiqi, FA0605000721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration to demonstrate its rights in the mark under Policy ¶4(a)(i)).
A complainant can establish secondary meaning by showing that it has continuously and extensively used the mark in commerce prior to registration of the disputed domain. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA0701000894477 (Nat. Arb. Forum Mar. 8, 2007) (finding ¶4(a)(i) satisfied where complainant only provided a copy of its website and a claim in the complaint that it used the mark in commerce three months before the respondent’s registration of the disputed domain name); see also Chris Robinson Assoc. Inc. v Domain Magic, LLC, FA0702000916992 (Nat. Arb. Forum Apr. 13, 2007) (concluding evidence of advertising expenses related to promoting the mark as well as printouts of websites advertising complainant’s talk show demonstrated secondary meaning under ¶4(a)(i)); Microsoft Corp. v. get pivot,FA1007001334355 (Nat. Arb. Forum Aug. 24, 2010) (finding secondary meaning where complainant filed for, but had not yet received, a trademark registration, and where complainant’s mark and related products were featured in technology news resources and press releases); Goepfert v. Rogers, FA0612000861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved . . .”). In making this showing, a complainant may submit evidence of its date of first use of the trademark in commerce, evidence that it has advertised using the mark, and evidence of the operation of a website displaying the mark. See, e.g., Piearson Indus., Inc. d/b/a Centerfire Firearms v. Dan F / Joe Mayo, FA1107001397844 (Nat. Arb. Forum Aug. 12, 2011).
Here, ShipChain has established its common law rights in the SHIPCHAIN Mark through secondary meaning. First, ShipChain has continuously used the SHIPCHAIN Mark in connection with its goods and services since 2017. In particular, since November 2017, ShipChain has offered and sold its goods and services through a variety of online channels, including ShipChain’s own commercial Website, which prominently displays the SHIPCHAIN Mark. ShipChain’s business, goods, and services have been highlighted in connection with ShipChain’s Mark through technology news sources, press releases, and social media platforms since at least that time. ShipChain has applied for registration of its Mark with the U.S. Patent and Trademark Office. Moreover, ShipChain has spent millions of dollars on advertising its goods and services using the Mark over the last year, and as a result, ShipChain has enjoyed prominent brand value, including from reaching out to partners and them looking up ShipChain. Furthermore, the Disputed Domain was not registered until at least four months after ShipChain used its Mark in commerce. All of these facts, taken together, establish ShipChain’s common law rights in the SHIPCHAIN Mark.
b) The Disputed Domain is identical and confusingly similar to the Mark.
Where a disputed domain name incorporates the entirety of the complainant’s trademark, the disputed domain is identical or confusingly similar to the complainant’s mark as those terms are defined in the Policy. See Xcentric Ventures, LLC d/b/a www.RipoffReport.com v. A-One Innovation Technologies Private Limited, No. FA1101001367044 (Nat. Arb. Forum Mar. 3, 2011) (finding that domain name <ripoffreport.cc> was identical to the complainant’s RIP-OFF REPORT mark); Google Inc. v. Ravi Mani, No. FA1006001330290 (Nat. Arb. Forum July 21, 2010); Hewlett-Packard Co. v. Zuccarini, FA94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> confusingly similar to the HEWLETT-PACKARD mark).
Panelists have consistently found that the addition of generic top-level domains, including “.vip,” is irrelevant in distinguishing the disputed domain from the complainant’s mark. See e.g., Katadyn N. Am. v. Black Mountain Stores, FA0507000520677 (Nat. Arb. Forum Sept. 7, 2005); Morgan Stanley v. tian ting gang, FA1677768 (Nat. Arb. Forum June 30, 2016) (finding <morganstanley.vip> identical to MORGAN STANLEY mark); Altria Grp., Inc. & Altria Grp. Distrib. Co. v. yu fan/fanyu, FA1607001683563 (Nat. Arb. Forum Aug. 18, 2016) (“The disputed domain name corresponds to Complainant's ALTRIA mark, adding only the ".vip" top-level domain, making it identical to Complainant's mark for purposes of paragraph 4(a)(i) of the Policy.”); BPG SRL v. Fu De Wie, D2016-2202 (WIPO Dec. 19, 2016) (ordering transfer of domain <netbet.vip>, which fully incorporated complainant’s mark, NETBET).
In this case, the Disputed Domain <ShipChain.vip> consists entirely and solely of the SHIPCHAIN Mark. The Disputed Domain is therefore identical and confusingly similar to ShipChain’s Mark and ShipChain’s domain name at <ShipChain.io>. The addition of “.vip” to the Disputed Domain is irrelevant for this analysis. An Internet user is likely to mistakenly type or come across the Disputed Domain in searching for ShipChain’s Website, thus causing consumer confusion.
Accordingly, because ShipChain owns valid trademark rights in the SHIPCHAIN Mark, and because the Disputed Domain is identical and confusingly similar to the SHIPCHAIN Mark, ShipChain has satisfied the Policy ¶4(a)(i).
2. Respondent has no rights or legitimate interest in the Disputed Domain. (Policy ¶4(a)(ii).)
A respondent’s attempts to pass itself off as a complainant by means of unauthorized use of that complainant’s mark is evidence that that respondent has no rights to or legitimate interests in a disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA156251 (Nat. Arb. Forum May 30, 2003); MUM Indus., Inc. v. Shanghai Cal-Mech Co., Ltd., FA1109001406718 (Nat. Arb. Forum Oct. 26, 2011) (finding use of domain to replicate complainant’s website was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Trip Network Inc. v. Alviera, FA914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”); Digg Inc. v. Digg, Inc., FA0808001220833 (Nat. Arb. Forum Oct. 9, 2008) (concluding, where domain name was used to display a mirror image of complainant’s website, that “Respondent is attempting to pass itself off as Complainant, so that Respondent’s actions do not constitute 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)”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA0308000180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking complainant’s website to a website of respondent and for respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
Further, lack of evidence that a respondent was ever identified by the mark, and the lack of evidence of a respondent’s prior awareness of the mark, shows the respondent’s lack of rights and legitimate interests in a disputed domain. See Morgan Stanley v. tian ting gang, FA1677768 (Nat. Arb. Forum June 30, 2016) (finding WHOIS information demonstrated that respondent was not commonly known by the domain name; and noting lack of evidence to the contrary); Am. Int’l Group, Inc. v. Busby, FA156251 (Nat. Arb. Forum May 30, 2003) (noting WHOIS did not indicate that respondent was commonly known by the domain name).
Complainant ShipChain has continually used its SHIPCHAIN Mark in commerce since 2017 and has applied for trademark registration. By contrast, Respondent did not use the Disputed Domain, which is being used to display a mirror copy of ShipChain’s Website, until at least several months later. Given the context, Respondent is offering and selling goods and services in direct competition with ShipChain and attempting to profit off of ShipChain’s Mark. Moreover, the Panel can infer that Respondent was aware of the SHIPCHAIN Mark when it registered the Disputed Domain based on Respondent’s blatant copying of ShipChain’s Website, ShipChain’s prevalent prior use of the Mark, and the fact that neither WHOIS nor other evidence indicate that Respondent used the Mark or Disputed Domain for any legitimate business. Thus, Respondent cannot establish that it has any rights or legitimate interests in the Disputed Domain, which comprises the entirety of the SHIPCHAIN Mark plus a generic top-level domain.
In summary, Respondent has no rights or legitimate interests in the Disputed Domain under the Policy ¶4(a)(ii).
3. Respondent registered and is using the Disputed Domain in bad faith. (Policy ¶4(a)(iii).)
To prevail in a UDRP proceeding, the complainant must prove on the balance of probabilities that the disputed domain was registered and is being used in bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Paragraph 4(b) of the Policy provides guidance on how to implement this requirement, setting forth the following four non-exhaustive situations, any one of which can evidence bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
Directly copying an entire website is clear evidence of bad faith. See Digg Inc. v. Digg, Inc., FA0808001220833 (Nat. Arb. Forum Oct. 9, 2008) (noting respondent used domain name to display a mirror image of complainant’s website); see also MUM Indus., Inc. v. Shanghai Cal- Mech Co., Ltd., FA1109001406718 (Nat. Arb. Forum Oct. 26, 2011); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain, which displayed a website virtually identical to the complainant’s website, constituted bad faith); Lambros v. Brown, FA198963 (Nat. Arb. Forum Nov. 19, 2003) (noting respondent “even included Complainant’s personal name on the website, leaving Internet users with the assumption that it was Complainant’s business they were doing business with”); Martin & C° v. Tian/Lan, D2016-1567 (WIPO Sept. 30, 2016) (finding bad faith when domain names were “clearly intended to refer to the Complainant”).
Similarly, registration and use of a domain name to redirect a competitor’s intending customers to a website offering similar goods and services constitutes bad faith. See CliC Goggles, Inc. v. Ernesto Duarte, No. FA1006001327834 (Nat. Arb. Forum July 13, 2010) (respondent’s use of domain name to redirect complainant’s intended customers to a competing website reflected bad faith registration and use of domain); Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA0606000724554 (Nat. Arb. Forum Aug. 1, 2006); News West Pub., Inc. v. O’Brien, FA1007001333948 (Nat. Arb. Forum Aug. 24, 2010) (finding bad faith where evidence showed respondent was using domain name to intentionally attempt to attract Internet users to its website by creating a likelihood of confusion with complainant’s mark).
Respondent acquired the Disputed Domain several months after ShipChain began using its SHIPCHAIN Mark in commerce. Then, by directly copying ShipChain’s Website, Respondent used the Disputed Domain to advertise goods and services that directly compete with the goods and services that ShipChain offers in connection with its SHIPCHAIN Mark. Respondent’s conduct reflects its primary purpose of disrupting the business of ShipChain (a direct competitor) as well as bad faith use of the Disputed Domain with the intent to attract, for commercial gain, Internet users by creating confusion with ShipChain’s Mark.
Based on Respondent’s registration and use of the Disputed Domain described herein, ShipChain has demonstrated Respondent’s bad faith as required under the Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language of Proceeding
The Registration Agreement is written in Chinese according to the Registrar, thereby making the language of the proceedings Chinese. Complainant requests the proceeding should be conducted in English because Respondent is conversant and proficient in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the case. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). While the Registrar notes the Registration Agreement is written in Chinese, it also appears in English on the Registrar’s website (and is so noted by Complainant). The disputed domain name is being used to display an exact copy of Complainant’s website in English, the domain name is written in English and expensive translation services would be needed if the Proceedings were not conducted in English. Respondent has not objected to the language of the Proceeding.
Therefore, the Panel will conduct this Proceeding in English.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complaint’s application for the SHIPCHAIN mark with the United States Patent and Trademark Office (“USPTO”) was filed on October 24, 2017 (Ser. No. 87,657,410 filed Oct. 24, 2017). Complainant claims common law rights to the SHIPCHAIN mark. Common law rights may be demonstrated through evidence of a secondary meaning under Policy ¶4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). The following is evidence of the SHIPCHAIN mark’s secondary meaning:
· Complainant has continuously used the SHIPCHAIN mark in connection with its goods and services since 2017.
· Complainant owns and uses the domain names <shipchain.io>, and <shipchain.com>.
· Complainant has marketed and advertised its goods and services using the SHIPCHAIN mark through its own commercial website and through social media, including Facebook, Telegram, Twitter, LinkedIn, and Instagram.
· Complainant has expended millions of dollars on advertising and marketing its goods and services in connection with the SHIPCHAIN mark.
· Complainant has been highlighted in connection with the SHIPCHAIN mark through technology news sources, press releases, and social media platforms.
Complainant has common law rights to the SHIPCHAIN mark in accordance with Policy ¶4(a)(i).
Complainant claims Respondent’s <shipchain.vip> domain name is identical to its mark because the entire SHIPCHAIN mark and the gTLD “.vip” constitute the domain name. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Altria Group, Inc. and Altria Group Distribution Company v. yu fan / fanyu, FA 1683563 (Forum Aug. 18, 2016) (“The disputed domain name corresponds to Complainant's ALTRIA mark, adding only the ".vip" top-level domain, making it identical to Complainant's mark for purposes of paragraph 4(a)(i) of the Policy.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits them.”). Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant claims Respondent has no rights or legitimate interests in the <shipchain.vip> domain name because Complainant did not authorize Respondent’s use of the SHIPCHAIN mark. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also 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), 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). The WHOIS simply identifies “谢东东 / 谢东东”” as the registrant. There is no obvious relationship between Respondent’s name and the disputed domain name. Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent does not use the <shipchain.vip> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use because Respondent attempts to pass itself off as Complainant to sell competing goods and services. Using a domain name to pass off as a complainant and offering competing goods and services is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the <shipchain.vip> domain name in bad faith because Respondent directly copies Complainant’s website, and advertises goods and services directly competing with Complainant. All of this disrupts Complainant’s business. Such uses of a disputed domain name demonstrate bad faith registration and use under Policy ¶4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶4(b)(iii)). It would be hard for Respondent to argue its use of Complainant’s mark was accidental, especially because Respondent copied Complainant’s website. Respondent knew about Complainant’s mark. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(iii) and (iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <shipchain.vip> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: June 21, 2018
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