Warner Bros. Entertainment Inc. v. haisen chen / chenhaisen
Claim Number: FA1802001770544
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is haisen chen / chenhaisen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wbgood.com> and <dc-family.com>, registered with MAFF Inc. and DropCatch.com 973 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 February 5, 2018; the Forum received payment on February 5, 2018.
On February 9, 2018, MAFF Inc. confirmed by e-mail to the Forum that the <wbgood.com> domain name is registered with MAFF Inc. and that Respondent is the current registrant of the name. On February 13, 2018, DropCatch.com 973 LLC confirmed by e-mail to the Forum that the <dc-family.com> domain name is registered with DropCatch.com 973 LLC and that Respondent is the current registrant of the name. MAFF Inc. and DropCatch.com 973 LLC have verified that Respondent is bound by the MAFF Inc. and DropCatch.com 973 LLC registration agreements, respectively, 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 February 16, 2018, the Forum served a Chinese language Amended Complaint and all Annexes, including a written Chinese language Notice of the Complaint, setting a deadline of March 8, 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@wbgood.com, and postmaster@dc-family.com. Also on February 16, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted via post and fax to Respondent and 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 March 13, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the WB and DC marks with the United States Patent and Trademark Office (“USPTO”), the WB mark (Reg. No. 1,517,912) on December 27, 1988, and the DC mark (Reg. No. 1,003,409) on January 28, 1975. It has thus acquired rights in both of these marks. Respondent’s <wbgood.com> domain name is confusingly similar to the WB mark, as it contains the mark in its entirety, plus the generic term “good” and the generic top-level domain (“gTLD”). The <dc-family.com> domain name is confusingly similar to Complainant’s DC mark as Respondent merely adds a hyphen, the generic term “family,” and the “.com” gTLD to the mark.
Respondent has no rights or legitimate interests in the <wbgood.com> or <dc-family.com> domain names (the “Domain Names”), as he is not licensed or authorized to use Complainant’s WB or DC marks and is not commonly known by either of them. Additionally, Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Names as he is inactively holding them.
Respondent engages in a pattern of bad faith registration and use as Respondent registered the Domain Names at about the same time. Additionally, he is making no active use of them. Furthermore, he registered the Domain Names with actual knowledge of Complainant’s rights in the WB and DC marks and this constitutes bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Language of Proceedings
The Registration Agreement is written in Chinese. Under Rule 11(a), the language of the proceedings is the language of that agreement, subject to the authority of the Panel to determine otherwise, having due regard for the circumstances of the case. In this case, the Complainant filed a Chinese language Amended Complaint on or about February 14, 2018. On February 16, 2018, in accordance with the Rules, the Forum served upon Respondent a copy of the Amended Complaint and a Chinese language Notice of Commencement, notifying Respondent that he had until March 8, 2018 to file a Response. Respondent failed to file a Response or any other type of responsive pleading. UDRP panels have found that under circumstances such as these it is proper to conduct the remainder of the proceedings in English. TRIA Beauty Inc., v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010) (“Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied though the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.”), Microsoft Corporation v. Jean Pierre Lafont a/k/a Yasir Yasi, FA 1349611 (Forum Nov. 9, 2010 (“Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied though the French language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.”). Under the circumstances present here, the Panel finds that the language requirement of Rule 11(a) has been met and determines that in light of the Respondent’s default the remainder of these proceedings may be conducted in English.
Preliminary Issue: Multiple Domain Names
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WHOIS information submitted as Exhibit A to the Complaint shows that both Domain Names are registered to “haisen chen,” with the registrant organization listed as “chenhaisen.” The address, telephone number and email address listed for both Domain Names are the same. On this evidence the Panel finds that both Domain Names are registered by the same person or entity, and will proceed as to both of them.
Merits of the Case
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 will 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 Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant registered its WB mark with the USPTO (Reg. No. 3,108,079) on December 27, 1988, and its DC mark with the USPTO (Reg No. 1,003,409) on January 28, 1975. See, Complaint Exhibit D. Registration of a mark with the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”), Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Names merely add generic terms, a hyphen and a gTLD to Complainant’s marks. Such changes do not distinguish domain names from a complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy), Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Based upon the forgoing, the Panel finds that the Domain Names are confusingly similar to the WB and DC marks, 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.
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 Names because (i) Respondent is not commonly known by either Domain Name, (ii) Complainant has not licensed or authorized Respondent to use either of its marks for any purpose whatever, (iii) Respondent is not using either Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the resolving web site is not active and is not being used for any purpose whatever. These allegations are supported by competent evidence. According to the WHOIS information submitted as Exhibit A to the Complaint, the Respondent, haisen chen, is the current registrant of the name. There is no evidence before the Panel suggesting that Respondent is commonly known by either Domain Name or any variation of either. Further, Complainant states that it has never authorized Respondent to use either its WB or its DC mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, both Domain Names resolve to a web site that is not set up—no use is being made of either name. See, Complaint Exhibit F. Failure to make active use of a confusingly similar domain name is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 is not currently using the Domain Name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Complainant has made its prima facie case. On the evidence presented, 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 discussed above in connection with the rights and legitimate interests analysis to the effect that the web site or sites resolving from the Domain Names are not active is also evidence of bad faith registration and use. Respondent’s web site is inactive—no use is being made of either Domain Name. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. 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), 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).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum Dec. 13, 2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
Further, because of the fame and notoriety of Complainant’s WB and DC marks, it is evident that Respondent had actual knowledge of them at the time he registered the Domain Names. It has frequently been held that registering a confusingly similar domain name with actual knowledge of a complainant’s mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). See eep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith), Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the WB and DC marks at the time he registered the Domain Names.
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 <wbgood.com> and <dc-family.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: March 16, 2018
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