Kinon Surface Design, Inc. v. yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service)
Claim Number: FA1805001785755
Complainant is Kinon Surface Design, Inc. (“Complainant”), represented by Joel B. Rothman of Schneider Rothman Intellectual Property Law Group, PLLC, Florida, USA. Respondent is yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service) (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kinonart.com>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2018; the Forum received payment on May 9, 2018.
On May 9, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <kinonart.com> 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 May 11, 2018, the Forum served the English and Chinese Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@kinonart.com. Also on May 11, 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 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Kinon Surface Design, Inc., manufactures, distributes, and sells unique, luxurious ornamental panels with decorative resin lacquers in connection with the KINON mark. Complainant has rights in the KINON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,409,441, registered Nov. 28, 2000). See Amend. Compl. Annex 3a. Respondent’s <kinonart.com> domain name is confusingly similar to Complainant’s KINON mark because Respondent merely adds the descriptive term “art” and the generic top-level domain (“gTLD”) “.com” to the KINON mark.
ii) Respondent does not have rights or legitimate interests in the <kinonart.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its KINON mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service)” as the registrant. See Compl. Annex 1. Additionally, Respondent is not using the <kinonart.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to generally divert Internet users.
iii) Respondent registered and used the <kinonart.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by operating a website that offers competing products or counterfeit versions of Complainant’s products. Respondent also attempts to create confusion with Complainant’s KINON mark for commercial gain.
B. Respondent
Respondent did not submit a Response.
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. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010) (“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.”)
1. Respondent registered the <kinonart.com> domain name on July 10, 2014.
2. Complainant has established rights in the KINON mark through its registration with the USPTO (e.g., Reg. No. 2,409,441, registered Nov. 28, 2000).
3. The <kinonart.com> website indicates that it offers products that compete with Complainant’s business or counterfeit versions of Complainant’s products.
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 has rights in the KINON mark through registration with the USPTO (e.g., Reg. No. 2,409,441, registered Nov. 28, 2000). See Amend. Compl. Annex 3a. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). As such, the Panel holds that Complainant established rights in the KINON mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <kinonart.com> domain name is confusingly similar to Complainant’s KINON mark because it merely adds the descriptive term “art” and the gTLD “.com.” The addition of a descriptive term and gTLD may not sufficiently distinguish a disputed domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Accordingly, the Panel holds that Respondent’s <kinonart.com> domain name is confusingly similar to Complainant’s KINON mark.
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 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 alleges that Respondent does not have rights or legitimate interests in the <kinonart.com> domain name. Specifically, Complainant argues Respondent is not commonly known by the domain name and is not licensed or otherwise authorized to use its KINON mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Additionally, WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <kinonart.com> domain name lists “yinsi baohu yi kai qi(Hidden by Whois Privacy Protection Service)” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <kinonart.com> domain name pursuant to Policy ¶ 4(c)(ii).
Further, Complainant alleges that Respondent is not using the <kinonart.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant argues Respondent uses the domain name to divert Internet users to its competing website. Use of a domain name to offer competing products or services may not be considered a bona fide offering or fair use under the Policy. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Complainant alleges screenshots of the <kinonart.com> website indicate that the site offers products that compete with Complainant’s business or counterfeit versions of Complainant’s products. See Amend. Compl. Annex 5. Therefore, the Panel finds that Respondent used the domain name to compete with Complainant’s business and holds that Respondent failed to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and used the <kinonart.com> domain name in bad faith by diverting Internet users to a competing website and disrupting Complainant’s business. Use of a domain name to disrupt a complainant’s business may be evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”). Complainant alleges that screenshots of the <kinonart.com> website indicate that the site features competing products or counterfeit versions of Complainant’s products for sale. See Amend. Compl. Ex. 5. Therefore, the Panel finds that Respondent disrupts Complainant’s business and holds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent attempts to create confusion with Complainant’s KINON mark for commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain may evidence bad faith use under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant alleges that Respondent’s <kinonart.com> domain name resolves to a website featuring panels for sale that either compete with Complainant’s products or are counterfeit versions of Complainant’s products. See Amend. Compl. Annex 5. Accordingly, the Panel holds that Respondent used the disputed domain name to create confusion with Complainant’s mark for commercial gain and holds that Respondent used the domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinonart.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 11, 2018
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