Swaggerty Sausage Company, Inc. v. Liu Xiao Yan
Claim Number: FA1811001816075
Complainant is Swaggerty Sausage Company, Inc. (“Complainant”), represented by John Gladney, Tennessee, USA. Respondent is Liu Xiao Yan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swaggertysausage.com>, registered with Alibaba Cloud Computing (Beijing) 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2018; the Forum received payment on November 12, 2018.
On November 13, 2018, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <swaggertysausage.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) 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 November 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@swaggertysausage.com. Also on November 27, 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 December 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Preliminary Issue: Language of the Proceeding
The Panel notes that Complainant requests that this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest it is the likely that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel decides that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions:
Complainant, Swaggerty Sausage Company, Inc. is a premium pork sausage processor. Complainant has rights in the SWAGGERTY’S FARM and SWAGGERTY’S FARM PREMIUM SAUSAGE marks based on its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., SWAGGERTY’S FARM -Reg. No. 4,458,200, registered Dec. 31, 2013; SWAGGERTY’S FARM PREMIUM SAUSAGE- 4,458,466, registered Dec. 31, 2013). See Compl. Ex. 2.
Respondent lacks rights and legitimate interests in the <swaggertysausage.com> domain name.
Respondent registered and uses the <swaggertysausage.com> domain name in bad faith as Respondent registered the domain after Complainant mistakenly let the domain name lapse as it had not been notified of the impending expiration of the registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a premium pork sausage processor.
2. Complainant has established its trademark rights to the SWAGGERTY’S FARM and SWAGGERTY’S FARM PREMIUM SAUSAGE marks based on its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., SWAGGERTY’S FARM -Reg. No. 4,458,200, registered Dec. 31, 2013; SWAGGERTY’S FARM PREMIUM SAUSAGE- 4,458,466, registered Dec. 31, 2013).
3. Respondent registered the <swaggertysausage.com> domain name on September 9, 2018.
4. The evidence establishes that Respondent registered the domain name after Complainant mistakenly let it lapse as it had not been notified of the impending expiration of the registration and that accordingly Respondent has no rights or legitimate interests in the disputed domain name and that it registered and has used the domain name 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 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SWAGGERTY’S FARM and SWAGGERTY’S FARM PREMIUM SAUSAGE marks based on its registration of the marks with the USPTO. Registration of a mark with the USPTO generally establishes a complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides copies of its registrations with the USPTO (e.g., Reg. No. 4,458,200, registered Dec. 31, 2013). See Compl. Ex. 2. Therefore, the Panel concludes that Complainant has rights in the SWAGGERTY’S FARM and SWAGGERTY’S FARM PREMIUM SAUSAGE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SWAGGERTY’S FARM and/or SWAGGERTY’S FARM PREMIUM SAUSAGE marks. Complainant does not specifically address identity or confusing similarity under Policy ¶ 4(a)(i), but the Panel notes that Respondent’s <swaggertysausage.com> domain name differs from Complainant’s SWAGGERTY’S FARM PREMIUM SAUSAGE mark in that it incorporates a portion of the mark, omits two words, removes an apostrophe, and adds a generic top-level domain (“gTLD”). Further, the Panel notes that the disputed domain name is confusingly similar to Complainant’s SWAGGERTY FARM mark as Respondent merely deletes a term within the mark, removes the apostrophe, adds a generic or descriptive term, and a gTLD. In either case, such changes may be insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD); see also SPTC, Inc. and Sotheby’s v. Kathleen Kim, FA 1734152 (Forum July 14, 2017) (“Respondent’s <sotheebys.com> domain name is identical or confusingly similar to Complainant’s mark because it merely appends the gTLD “.com” to a misspelled version of Complainant’s SOTHEBY’S mark, less the apostrophe.”). Here, Respondent incorporates the SWAGGERTY’S FARM PREMIUM SAUSAGE mark in the domain, omits an apostrophe and a letter “s,” omits the words “farm” and “premium,” and adds a “.com” gTLD. Additionally, the Panel finds Respondent incorporates the SWAGGERTY’S FARM mark in the domain name while deleting the term “farm,” removing the letter “s” and an apostrophe, adding the term “sausage” and a “.com” gTLD. Therefore, the Panel concludes that the <swaggertysausage.com> domain name is confusingly similar to both Complainant’s SWAGGERTY’S FARM PREMIUM SAUSAGE and SWAGGERTY’S FARM marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SWAGGERTY’S FARM PREMIUM SAUSAGE and SWAGGERTY’S FARM marks and to use them in its domain name, with the amendments referred to above which do not negate the confusing similarity with Complainant’s marks;
(b) Respondent registered the <swaggertysausage.com> domain name on September 9, 2018;
(c) The evidence establishes that Respondent registered the domain name after Complainant mistakenly let it lapse as it had not been notified of the impending expiration of the registration and that accordingly Respondent has no rights or legitimate interests in the disputed domain name and that it registered and has used the domain name in bad faith;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <swaggertysausage.com> domain name, but does not specifically address any Policy ¶ 4(a)(ii) or Policy ¶ 4(c) arguments. However, the Panel will consider whether Respondent is commonly known by the <swaggertysausage.com> domain name or whether anything in the record indicates that Complainant has authorized Respondent to use its marks. Where a response is lacking, relevant WHOIS information may be used to identify the respondent. 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)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies Respondent as “Liu Xiao Yan,” and no information in the record shows that Respondent was authorized to use Complainant’s marks or was commonly known by the disputed domain. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <swaggertysausage.com> domain name under Policy ¶ 4(c)(ii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent registered and uses the <swaggertysausage.com> domain name in bad faith because Respondent registered a domain name that Complainant had previously owned and mistakenly allowed to lapse as it had not been notified of the impending expiration of the registration. Registration of a previously held domain name after inadvertent lapse may evince bad faith under Policy ¶ 4(a)(iii). See Conrad Rice Mill, Inc. v. Valerie Jones, FA 1721849 (Forum Apr. 29, 2017) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a long-held domain name). Here, Complainant submits that it has owned the domain name for “over a dozen years” and the Panel accepts that submission. Complainant submits that its registration of the domain name lapsed in June of 2018, but that it did not discover the lapse until after Respondent registered the domain name on September 9, 2018. See Compl. Ex. 1. As the Panel finds Complainant’s contentions sufficient, the Panel finds that Respondent registered and uses the <swaggertysausage.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SWAGGERTY’S FARM PREUMIUM SAUSAGE and SWAGGERTY’S FARM marks and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swaggertysausage.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 20, 2018
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