Executive Pathway Pty Ltd v. Ming Wu
Claim Number: FA1806001793184
Complainant is Executive Pathway Pty Ltd (“Complainant”), Australia. Respondent is Ming Wu (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myshape.com>, registered with GoDaddy.com, LLC.
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 June 22, 2018; the Forum received payment on June 22, 2018.
On June 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myshape.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@myshape.com. Also on June 29, 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 July 25, 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The domain name is the same words “my shape” as combined in the trademark.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
There are three reasons for the Respondent not having no rights or legitimate interest:
1. The original DN holder was deprived of the DN unlawfully. MYSHAPE Inc was the owner of TMs and of the DN. MYSHAPE was unlawfully removed as the owner of the DN, as at the time of the “surrender” of the DN, there was no one authorized person to deal with the DN. Specifically as a company where the relevant filings had not been made, there was no authority to deal with the DN.
2. The DN having been unlawfully surrendered, the respondent secured the registration of the DN in their name, contrary to the rights of MYSHAPE Inc as the TM owner.
3. The respondent having registered and having renewed the DN has no interest in the DN, with no TM or other business activity.
The Complainant has invested in an App to be released based on the DN consistent with the TM Class
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Under (b)(2) and (b)(3) above it is clear that the original registration by the respondent and the subsequent renewal were done in bad faith, contrary to the rights of MYSHAPE Inc and on the most recent renewal contrary to the interests of the Claimant.
At the time of registration of the DN by the Respondent the DN was searchable on Archive Org.
Passive holding of a DN has been confirmed in WIPO decisions to include within the term “being used in bad faith”. (see Natixis v. Contact Privacy Inc. Customer 0150507289 / Kevin Deffolin, Case No. D2018-0690).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 rights or legitimate interests in respect of the domain name; and
(3) the domain name NOT 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.”).
Complainant has rights in the MY SHAPE mark through its registration of the mark with the Commonwealth of Australia Trade Mark Office (“CATMO”) (e.g. Reg. No. 1,860,671, registered March 1, 2018). Registration of a mark with a governmental authority, such as the CATMO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶4(a)(i)). Complainant has established rights in the MY SHAPE mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <myshape.com> domain name is identical to Complainant’s mark it consists solely of the same words as the trademark. The domain name also contains the generic top-level domain (“gTLD”) “.com”. Simply adding a top level domain (whether a gTLD, sTLD or ccTLD) does not so change the domain name from the trademark that it prevents a finding they are identical. The secondary domain name is identical to Complainant’s mark for the purposes of Policy ¶4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The <myshape.com> domain name is identical to the MY SHAPE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has not established a prima facie case in support of its argument Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Frankly, Complainant’s arguments are unintelligible. It appears someone in Complainant’s organization transferred the disputed domain to Respondent. The circumstances surrounding the transfer are unexplained. It is unclear what was acquired (which might even have included goodwill associated with the mark). It is unclear when the transfer occurred. Complainant’s summary statement that some undisclosed person lacked authority to transfer the domain name under some undisclosed circumstances at some undisclosed time is simply not sufficient to make out a prima facie case. Giving Respondent permission to register the domain name through a transfer constitutes consent for Respondent to register the domain name.
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
Complainant failed to meet the burden of proving bad faith registration and use under Policy ¶4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Once again, Complainant has done a very poor job of presenting its case. The date the domain was transferred was not proven. The circumstances of the domain’s transfer were not proven. The domain appears to have been registered on May 21, 2001, which seems to substantially predate Complainant acquiring any rights in the mark (Complainant appears to have acquired rights around July 28, 2017). Complainant appears to have voluntarily transferred the domain name to Respondent, which makes it impossible to conclude Respondent registered the domain name and used it in bad faith. Having already voluntarily transferred the domain to Respondent, Complainant cannot renege on the deal and use the UDRP to get back what Complainant voluntarily transferred. That constitutes reverse domain name hijacking.
This Panel is not familiar with Australian corporate law (although Complainant has not actually specified the applicable corporate law). Complainant suggests an Australian corporation not in good standing, because its filings are not up-to-date, has no authority to deal with its properties (or to conduct any activities). This Panel suggests as a general proposition that a corporation always has the power (or at least should have the power as a matter of common sense) to deal with its property, even if only to wind up the corporation’s affairs (whether or not the corporation is in good standing), whether or not the corporation is in good standing.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having NOT established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <myshape.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, August 3, 2018
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