Cheng Shin Rubber Ind. Co., Ltd. v. ysnhziyong / Chang Sha Han Ya Lun Tai You Xian Gong Si
Claim Number: FA1805001789102
Complainant is Cheng Shin Rubber Ind. Co., Ltd. (“Complainant”), represented by Joseph V. Myers of Seyfarth Shaw LLP, Georgia, USA. Respondent is ysnhziyong / Chang Sha Han Ya Lun Tai You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maxxls.com>, registered with HiChina Zhicheng Technology Limited.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2018; the Forum received payment on May 29, 2018. The Complaint was received in both the English and Chinese language.
On May 31, 2018, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <maxxls.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 June 8, 2018, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 28, 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@maxxls.com. Also on June 8, 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 July 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 innovator in the tire industry, providing high performance tires around the globe. Complainant has become one of the leading providers of high performance tires, and the ninth largest tire company in the world. Complainant has rights in the MAXXIS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,712,661, registered Sep. 1, 1992). Respondent’s <maxxls.com> domain name is confusingly similar to Complainant’s mark as it merely replaces the letter “i" in the mark with the letter “l” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <maxxls.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 uses the domain name to redirect users to its own website where it markets its own competing products and services.
Respondent registered and uses the <maxxls.com> domain name in bad faith. Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Further, Respondent engages in typosquatting in attempts to capitalize on Internet users’ typing mistakes. Finally, Respondent plainly knew of Complainant’s MAXXIS mark at the time it registered the infringing domain name, given the fact that Complainant’s goods had already received significant consumer and industry popularity and recognition.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Cheng Shin Rubber Ind. Co., Ltd., of Taiwan. Complainant is the owner of domestic and international registrations for the mark MAXXIS and variations thereon, including words and designs, that constitute the MAXXIS family of marks. Complainant has used the MAXXIS mark continuously since at least as early as 1992, in connection with its production and distribution of high performance tires around the world.
Respondent is ysnhziyong / Chang Sha Han Ya Lun Tai You Xian Gong Si, of China. Respondent’s registrar’s address is also listed as China. The Panel notes that Respondent registered the <maxxls.com> domain name on or about February 26, 2012.
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 claims rights in the MAXXIS mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,712,661, registered Sep. 1, 1992). 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).”). The Panel here finds that Complainant has established rights in the MAXXIS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <maxxls.com> domain name is identical or confusingly similar to Complainant’s mark as it merely replaces the letter “i" in the mark with the letter “l” and adds the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also 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). The Panel here finds that the <maxxls.com> domain name is confusingly similar to the MAXXIS mark under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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 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). The Complainant here has set forth the requisite prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <maxxls.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 “ysnhziyong / Chang Sha Han Ya Lun Tai You Xian Gong Si” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the MAXXIS mark. 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 domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. As Respondent has not disputed any of Complainant’s assertions, the Panel finds that Respondent is not commonly known by the <maxxls.com> domain name under Policy ¶ 4(c)(ii).
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 to a webpage that directly competes with a complainant fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 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 provides a screenshot of the resolving webpage, which displays images of tire products and additional content in the Chinese language. The Panel here finds that Respondent attempts to compete with Complainant’s business, failing to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <maxxls.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As previously noted, Complainant provides a screenshot of the resolving webpage, which displays images of tire products and additional content in the Chinese language. The Panel here finds that Respondent attempted to commercially benefit off Complainant’s mark by registration and use in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that by substituting the letter “i” with the letter “l,” Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent’s substitution of one letter in Complainant’s mark constitutes typosquatting, further evincing bad faith registration and use by Respondent per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the<maxxls.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 16, 2018
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