John Suhr v. Pan Huang
Claim Number: FA1809001807394
Complainant is John Suhr (“Complainant”), represented by Hani Sayed of Rutan & Tucker LLP, California, USA. Respondent is Pan Huang (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suhrguitars.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2018; the Forum received payment on September 21, 2018.
On September 24, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <suhrguitars.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@suhrguitars.com. Also on September 24, 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 October 22, 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.
A. Complainant
Complainant made the following contentions.
1. Complainant, John Suhr, is a well-known maker and retailer of guitars. Complainant began making custom guitars in the 1980s and has used the SUHR mark in connection with his business since that time.
2. Complainant has rights in the SUHR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,520,359, registered Dec. 18, 2001).
3. Complainant registered the disputed domain name in 1998 and it thereafter resolved to Complainant’s website at www.suhrguitars.com which promoted Complainant’s business and subsequently to Complainant’s principal website at www.suhr.com which was also used to promote Complainant’s business.
4. The disputed domain name was due for re-registration on or about April 26, 2018, but due to an oversight it was not re-registered.
5. Respondent purchased the domain name on or about May 26, 2018. Respondent has remained the registrant of the domain name since then.
6. The domain name is confusingly similar to Complainant’s SUHR mark as it merely adds to the mark the descriptive word “guitars” and the “.com” generic top-level domain (“gTLD”).
7. Respondent has no rights or legitimate interests in the <suhrguitars.com> domain name.
8. Respondent does not use the 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 give the false impression that the domain name and the website to which it resolves are still owned and operated by Complainant and to lure visitors to the site where it displays click-through links to third-party gambling websites under the guise of offering advice on guitars.
9. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Pan Huang.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose.
10. Respondent registered and uses the <suhrguitars.com> domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to the resolving website for the domain name where it offers information and clink-through links to third-party gambling websites under the guise of offering advice on guitars.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, John Suhr, is a well-known maker and retailer of guitars who began making custom guitars in the 1980s.
2. Complainant has established its trademark rights in the SUHR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,520,359, registered Dec. 18, 2001).
3. Complainant registered the disputed domain name in 1998.
4. The disputed domain name was due for re-registration on or about April 26, 2018, but due to an oversight it was not so re-registered.
5. Respondent purchased the domain name on or about May 26, 2018. Respondent has remained the registrant of the domain name since then.
6. Respondent uses the domain name to give the false impression that the domain name and the website to which it resolves are still owned and operated by Complainant and to lure visitors to the site where it displays click-through links to third-party gambling websites under the guise of offering advice on guitars.
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 claims rights in the SUHR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,520,359, registered Dec. 18, 2001). 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 has been able to verify the registration by examining the public record at the USPTO. Accordingly, the Panel finds that Complainant has established rights in the SUHR mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SUHR mark. Complainant argues that Respondent’s <suhrguitars.com> domain name is confusingly similar to Complainant’s SUHR mark as it merely adds the descriptive word “guitars” and the “.com” gTLD to the SUHR trademark. Similar changes in a registered mark have failed to distinguish a domain name from a trademark sufficiently for the purposes of Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds that the <suhrguitars.com> domain name is confusingly similar to the SUHR mark 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 acquire a domain name that includes Complainant’s SUHR trademark to which has been added the generic word “guitars” that does not negate the confusing similarity with Complainant’s trademark and which is well known as the product offered by Complainant;
(b) Complainant registered the disputed domain name in 1998 and it thereafter resolved to Complainant’s website at www.suhrguitars.com which promoted Complainant’s business and subsequently to Complainant’s principal website at www.suhr.com which was also used to promote Complainant’s business;
(c) The disputed domain name was due for re-registration on or about April 26, 2018, but due to an oversight it was not re-registered;
(d) Respondent purchased the domain name on or about May 26, 2018. Respondent has remained the registrant of the domain name since then;
(e) Since acquiring it, Respondent has used the domain name to give the false impression that the domain name and the website to which it resolves are still owned and operated by Complainant and to lure visitors to the website where it displays click-through links to third-party gambling websites under the guise of offering advice on guitars;
(f) Complainant argues that Respondent uses the domain name to lure visitors to its website where it displays click-through links to third-party gambling websites. Using a domain name to offer links to services unrelated to those of a complainant generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). The Panel has examined the public record of the use of the domain name to be found at www.archive.org and how it is currently used. The historical record reveals that from 1998 and for the following twenty years during which Complainant was the registrant of the domain name and responsible for the contents of the website to which it revolved, the website promoted Complainant’s legitimate business in guitars. Today, the website contains text that purports to be advice on guitars. However, the text includes hyperlinked and coloured links to ”judi bola”, “taruhan bola”, “judi bola online” ,”situs judi online”, “poker online”, “poker online”, “agen sbobet terpercaya” , “agen bola” and “ agen sbobet”. When these links are clicked on they lead to a vast array of gambling and betting options, which in turn lead to other gambling sites and information of a gambling nature. It is apparent therefore that Respondent is using the domain name to resolve to its website where these gambling and related facilities are being offered under the guise of advice on guitars and under the name “suhr guitars.” Some links also seek personal contact details and bank details. The Panel therefore finds that Respondent fails to use the domain name in connection with 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). There is no way that the conduct just identified could be described as bona fide or legitimate;
(g) Respondent has engaged in these activities without the consent or approval of Complainant;
(h) Complainant contends that Respondent is not commonly known by the disputed domain name. Where a response is lacking, relevant information to determine this issue includes the WHOIS and any other evidence produced 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 “Pan Huang” as the registrant. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the SUHR mark. Panels may use these submissions 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. Accordingly, the Panel finds that Respondent is not commonly known by the <suhrguitars.com> domain name under Policy ¶ 4(c)(ii);
(i) It should also not be forgotten that Respondent acquired the disputed domain name in dubious circumstances. It is true that it bought the domain name when Complainant’s registration inadvertently lapsed. However, Respondent clearly seized on this opportunity to acquire a domain name promoting another person’s business, allowed the false impression to flourish that it was still owned and being used by Complainant, and then manipulated the website so that it was in effect a website for gambling interests but under the false colours of being a legitimate site promoting Complainant’s guitar business. Similar sequences of events have occurred in the past and panels have rightly been prepared to hold that such conduct by respondents is illegitimate and they have done what they can to restore the relevant domain name to its former owner. Thus, by way of an example, the panel in RH Interactive Jobfinance v. Mooburi Services, FA0212000137041, (Forum Case, Jan.16, 2003), in analogous circumstances had no difficulty in observing: “Before Respondent began use of the disputed domain name, Complainant held the registration and used <jobfinance.com> for its services. Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond in this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).”
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, Complainant argues that Respondent registered and uses the <suhrguitars.com> domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website where it offers information and advice regarding guitars along with clink-through links to internet gambling sites. 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 Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also 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.”). The Panel finds that Respondent’s conduct described in more detail under Rights and Legitimate Interests shows that Respondent attempts to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s purchase and registration of the disputed domain name using the SUHR mark and in view of the conduct that Respondent has engaged in when using the disputed domain name described in more detail under Rights and Legitimate Interests, Respondent registered and used it in bad faith within the generally accepted meaning of that expression. There is no doubt in the mind of the Panel that Respondent acquired and used the domain name with the intention of improperly making money from it by using it as a gambling site under the guise of its being a site for advice on guitars allegedly provided by Complainant.
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 <suhrguitars.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 24, 2018
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