Oneida Ltd. v. shenxingyu
Claim Number: FA1812001820336
Complainant is Oneida Ltd. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is shenxingyu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oneidacom.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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2018; the Forum received payment on December 11, 2018.
On December 12, 2018, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <oneidacom.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 December 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2019 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@oneidacom.com. Also on December 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 January 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 is a leading global marketer of tabletop and food preparation products for the consumer and foodservice markets. For over a century, Complainant’s products have been a staple in homes, fine dining establishments, family restaurants, and hotels. Complainant has rights in the ONEIDA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,299,604, registered Dec. 14, 1999). Respondent’s <oneidacom.com> domain name is confusingly similar to Complainant’s mark as it merely adds the descriptive term “com” and the “.com” generic top-level domain (“gTLD”) to Complainant’s fully incorporated mark.
Respondent has no rights or legitimate interests in the <oneidacom.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ONEIDA mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent is not using the subject domain name.
Respondent registered and uses the <oneidacom.com> domain name in bad faith. Respondent fails to make a use of the resolving webpage associated with the disputed domain name
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a leading global marketer of tabletop and food preparation products for the consumer and foodservice markets. For over a century, Complainant’s products have been a staple in homes, fine dining establishments, family restaurants, and hotels. Complainant has rights in the ONEIDA mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,299,604, registered Dec. 14, 1999). Respondent’s <oneidacom.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <oneidacom.com> domain name on November 11, 2018.
Respondent has no rights or legitimate interests in the <oneidacom.com> domain name. Respondent is not using the subject domain name.
Respondent registered and uses the <oneidacom.com> 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.”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant has rights in the ONEIDA mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (Registration of a mark with the USPTO sufficiently confers to a complainant rights in a mark for the purposes of Policy ¶ 4(a)(i).).
Respondent’s <oneidacom.com> domain name is confusingly similar to Complainant’s mark as it adds the descriptive term “com” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <oneidacom.com> domain name. Complainant has not authorized Respondent to use the ONEIDA mark. The WHOIS identifies “Shenxingyu” as the registrant of the domain name. Respondent is not commonly known by the <oneidacom.com> domain name under Policy ¶ 4(c)(ii). See 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).
Respondent is not using the <oneidacom.com> domain name domain name. The resolving webpage associated with the domain name displays the message “DNS error (the host name of the page you are looking for does not exist) Please check that the host name has been spelled correctly.” Failure to make active use of a confusingly similar domain name shows a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent fails to make an active use of the <oneidacom.com> domain name, which shows bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to 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 <oneidacom.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 25, 2019
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