CIKA ELECTRONICA SRL v. Ge Chunzi
Claim Number: FA1807001796322
Complainant is CIKA ELECTRONICA SRL (“Complainant”), represented by Gene Paul Balabag of CIKA ELECTRONICA SRL, Argentina. Respondent is Ge Chunzi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cika.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 11, 2018; the Forum received payment on July 12, 2018.
On July 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cika.com> domain name (the ”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 July 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 2, 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@cika.com. Also on July 13, 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 August 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 imports and distributes semiconductor active and passive components from various manufacturers, as well as GPS and RF modules in Argentina. Complainant has common law rights in its CIKA.COM mark and used the <cika.com> Domain Name as its primary website and email address domain since 1998. It has thus acquired common law trademark rights in that mark. The Domain Name is identical to Complainant’s mark.
Respondent does not have rights or legitimate interests in the Domain Name because Respondent hacked Complainant’s user account and opportunistically transferred it into his own name. Respondent does not now use the Domain Name to make any legitimate offering of goods or services. Further, Respondent failed to respond to Complainant’s communications with respondent about the Domain Name.
Respondent registered and is using the Domain Name in bad faith. He unlawfully, and without any right to do so had it transferred from Complainant to his own name. Also, Respondent has established a pattern of bad faith registration by registering thousands of domain names that infringe on third parties’ rights in marks.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
Complainant identifies the Domain Name as its trademark. The Panel believes that this mischaracterizes the Domain Name, which is after all a domain name, not a trademark. Complainant’s trademark is its corporate name, CIKA ELECTRONICA SRL. Complainant admits that it does not have a trademark registration for its CIKA ELECTRONICA SRL mark but offers evidence that it has common law rights in that mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. 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.”).
Complainant, based in Buenos Aires, Argentina, has been in the business of importing and distributing electronic components since 1998. It registered its corporate name CIKA ELECTRONICA SRL with the Administración Federal de Ingresos Públicos, which is the Argentine version of the U. S. Internal Revenue Service, in 1989 (See, Complaint Annex B). It registered the Domain Name with Network Solutions in 1998 (See, Complaint Annexes C-1 and C-2) and used that as its primary web site and email address domain from that date until earlier this year, when its account with Network Solutions was hacked and the Respondent used the illegal access to transfer it to a different registry, UniRegistry. Complaint Annex F is a screenshot of Complainant’s web site under the Domain Name as it existed in July 2017 prior to the hijacking. Complaint Annex D-1 is a copy of undated distributor lists published by Complainant’s vendors showing Complainant as an authorized distributor of these companies’ products. Complaint Annex D-3 is a copy of portions of a distributorship agreement showing that Complainant was a distributor of the products of Digi International, Inc. from 1 October 2007 to 30 September 2008. It is clear that Complainant has been using its CIKA ELECTRONICA SRL mark in the business as it claims for an extended period of time, and it has thus acquired common law rights in the CIKA ELECTRONICA SRL mark.
The Domain Name is confusingly similar to Complainant’s CIKA ELECTRONICA SRL mark, as it incorporates the distinctive component CIKA verbatim, deletes two descriptive terms, and adds the generic top-level domain (gTLD) “.com.” The terms “electronica” and “srl” are merely descriptive. The component of Complainant’s mark which really identities Complainant, “CIKA,” remains in the Domain Name, and the omission the other two components is not sufficient to distinguish the Domain Name from Complainant’s mark. Neither is the addition of the gTLD “.com.” VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).) Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the CIKA ELECTRONICA SRL mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1. 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”).
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because he is not using it for any purpose, and (ii) he hijacked it from Complainant. Complainant submitted no documentary or other evidence in support of these allegations. In light of Respondent’s default in this matter, however, the Panel is entitled to accept them as true, and as such they do support a prima facie finding that Respondent has no rights or legitimate interests in the Domain Name. The evidence discussed above in connection with Complainant’s common law trademark rights in the CIKA ELECTRONICA SRL mark demonstrates clearly that at least until July 2017 Complainant owned and was using the Domain Name in connection with its business operations. The WHOIS report submitted as Complaint Annex A shows that Respondent is now the registrant of the name. There is no evidence before the Panel suggesting that Respondent acquired that registration by lawful means. Also, Respondent has failed to respond to the Complaint in these proceedings. UDRP panels have held that where the respondent failed to respond to the complaint and opportunistically registered the domain name when the complainant inadvertently allowed the registration to lapse, the respondent cannot claim rights or legitimate interests in the name. Clark v. HiNet, Inc., FA 405057 (Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse). If opportunistically registering a domain name that a complainant inadvertently allowed to lapse cannot confer rights or legitimate interests upon a respondent, it is even more evident that a respondent who hacks into a registry account and unlawfully transfers a domain name to his own account cannot thereby acquire rights or legitimate interests in that name. It is important to recognize that this very Domain Name belonged to and was used by Complainant in its business for approximately twenty years—it is Complainant’s Domain Name, and Respondent has no legitimate claim to it.
Complainant further contends that Respondent does not use the Doman Name to make a legitimate offering of products or services. It alleges that the Domain Name is under “temporary lock” status. It does not offer any screenshots of the web site presently resolving from the Domain Name, but its allegations that it is under a “temporary lock” status and that Respondent is not making any legitimate offering of products or services in connection with it may, in the absence of a response, be taken as true. A respondent’s failure to use a domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use is evidence that the respondent lacks rights and legitimate interests in the name within the meaning of Policy ¶¶ 4(c)(i) or (iii). Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Additionally, although Complainant did not assert the argument, it is evident that the Respondent is not commonly known by the Domain Name. According to the WHOIS information submitted as Complaint Annex A, the registrant of the Domain Name is “Ge Chunzi.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights and legitimate interests analysis does support a finding of bad faith use and registration. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and Complainant’s evidence of its former ownership and use of the Domain Name, coupled with Respondent’s current registration thereof, are sufficient in the view of the Panel to support a finding that Respondent did in fact hijack the Domain Name from Complainant, and this is manifest evidence of bad faith use and registration for the purposes of Policy ¶ 4(a)(iii). Worldcom Exchange, Inc. v. Wei.com Inc, ibid. (finding domain hijacking to be within the scope of the Policy and evidence of bad faith).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cika.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: August 9, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page