CCH Incorporated v. Wuxi Yilian LLC
Claim Number: FA1712001763470
Complainant is CCH Incorporated (“Complainant”), represented by Andrew J. Avsec of Brinks Hofer Gilson & Lione, Illinois, USA. Respondent is Wuxi Yilian LLC (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cchaxces.com>, registered with Bizcn.com, Inc..
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 December 18, 2017; the Forum received payment on December 18, 2017.
On December 28, 2017, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <cchaxces.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 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@cchaxces.com. Also on December 28, 2017, 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 19, 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 registered the CCH mark with the United States Patent and Trademark Office (“USPTO”) (e.g. CCH—Reg. No. 1,558,999, registered Oct. 3, 1989). See Compl. Annex H. Complainant asserts common law rights in the CCH AXCESS mark. Respondent’s <cchaxces.com> domain name is confusingly similar to Complainant’s CCH and CCH AXCESS marks as the disputed domain name wholly incorporates both marks, while removing one “s” from the “CCH AXCESS” mark and appending the “.com” generic top-level-domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <cchaxces.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant and purports to offer competing services to those offered by Complainant. See Compl. Annex J.
iii) Respondent registered and uses the <cchaxces.com> domain name in bad faith. Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s resolving website of which attempts to pass off as Complainant and purports to compete with Complainant. Respondent has been the party to previous UDRP proceedings that infringed third party trademarks. Respondent had actual knowledge of Complainant’s rights in the CCH and CCH AXCESS marks prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <cchaxces.com> domain name on October 25, 2017. See Compl. Annex B.
Complainant established that it had rights in the marks contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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.”).
Complainant asserts rights in the CCH mark based upon registration with the USPTO (e.g. CCH—Reg. No. 1,558,999, registered Oct. 3, 1989). See Compl. Annex H. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the CCH mark.
Next, Complainant asserts common law rights in the CCH AXCESS mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration of a domain name that encompasses said mark if the complainant can demonstrate common law rights in the mark. See 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). Complainant asserts it first used the CCH AXCESS mark in 2013 and has used the mark in connection with the online and print marketing, as well as in connection with Complainant’s cloud-based software. See Compl. Annex E. Complainant asserts the CCH AXCESS mark has enjoyed great fanfare in the industry and thus Complainant has established common law rights in the mark. See Compl. Annex G. The Panel agrees with Complainant and finds Complainant has common law rights in the CCH AXCESS mark.
Next, Complainant argues that Respondent’s <cchaxces.com> domain name is confusingly similar to Complainant’s CCH and CCH AXCESS marks as the disputed domain name wholly incorporates both marks, while removing one “s” from the “CCH AXCESS” mark and appending the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that the <cchaxces.com> domain name is confusingly similar to the CCH and CCH AXCESS marks under Policy ¶4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <cchaxces.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Wuxi Yilian LLC / Wuxi Yilian LLC” as the registrant. See Compl., at Attached Annex B. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CCH and CCH AXCESS marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <cchaxces.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant argues Respondent uses a confusingly similar domain name to attract Internet users to a website that offers “accounting software online,” “software tax prep,” and “income tax prep services.” See Compl. Annex J. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant alleges Respondent has been the party to previous UDRP proceedings that infringed third party trademarks. A complainant may use serial cybersquatting to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant alleges Respondent has been subject to nineteen UDRP proceedings involving domain names that infringed third party trademarks. See Compl. Annex K; see also Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Wuxi Yilian LLC, Wuxi Yilian LLC, FA 1678905 (Forum July 18, 2016); Cardinal Health, Inc. v. Wuxi Yilian LLC, FA 1753176 (Forum Nov. 20, 2017). Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith by engaging in cybersquatting.
Next, Complainant argues that Respondent registered and uses the <cchaxces.com> domain name in bad faith by intercepting users seeking Complainant’s services and commercially benefit by offering competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant can evince bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant alleges Respondent’s disputed domain name resolves to an active website advertising competing services. See Compl. Annex J. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Last, Complainant asserts Respondent had actual knowledge of Complainant’s rights in the CCH and CCH AXCESS marks prior to registration of the disputed domain name. The non-exclusive nature of Policy ¶ 4(b) allows for the consideration of additional factors in an analysis for bad faith. 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). Actual knowledge of a complainant’s rights in a mark prior to registration is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant contends Respondent’s actual knowledge of Complainant’s rights in the CCH and CCH AXCESS marks prior to registration of the disputed domain name is evinced by the confusingly similar domain name that wholly incorporates both marks, as well as Respondent’s use of the disputed domain name to offer services in competition with Complainant. See Compl. Annex J. The Panel infers due to the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the CCH and CCH AXCESS marks prior to registration of the disputed domain name, and thus acted in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cchaxces.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 22, 2018
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