Cabela's LLC v. Zhichao Yang / Carolina Rodrigues / Fundacion Comercio Electronico / Li Jin Liang
Claim Number: FA1811001814610
Complainant is Cabela's LLC (“Complainant”), represented by Sam E Iverson of Pillsbury Wintrop Shaw Pittman LLP, California, USA. Respondents are Zhichao Yang, China, /Carolina Rodrigues / Fundacion Comercio Electronico, Panama City, Panama / Li Jin Liang, China (“Respondents”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cabelassclubvisa.com>, <cabelasculbvisa.com>, <cabelasclubvisaa.com>, <cabelasclubvias.com>, and <cabelasclubcisa.com>, registered with NameSilo, LLC; <cabelasclubsvisa.com> and <mycabelasvisa.com>, registered with GoDaddy.com, LLC; and <cabelasclbvisa.com>, <cabelasclubvia.com>, <cabelasclubvsa.com>, <cabelascubvisa.com>, <cabelasclubviss.com>, <cabelasclubvosa.com>, <cabelasclubvusa.com>, <cabelasclybvisa.com>, <cabelasvlubvisa.com>, <cabbelasclubvisa.com>, <cabelascllubvisa.com>, <cabelasclubbisa.com>, <cabelasclubbvisa.com>, <cabelasclubviaa.com>, <cabelasclubvida.com>, <cabelasclubviisa.com>, <cabelasclubvvisa.com>, <cabelascluubvisa.com>, <cabelascluvvisa.com>, <cabelasxlubvisa.com>, <ccabelasclubvisa.com>, <cabelaaclubvisa.com>, <cabelaasclubvisa.com>, and <cabeladclubvisa.com> (“Domain Names”) registered with Chengdu West Dimension Digital Technology Co., Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2018; the Forum received payment on November 13, 2018. The Complaint was received in both Chinese and English.
On Nov 1, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <cabelassclubvisa.com>, <cabelasculbvisa.com>, <cabelasclubvisaa.com>, <cabelasclubvias.com>, and <cabelasclubcisa.com> domain names are registered with NameSilo, LLC and that Respondent Zhichao Yang is the current registrant of the names. On Nov 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cabelasclubsvisa.com> and <mycabelasvisa.com> domain names are registered with GoDaddy.com, LLC and that Respondent Carolina Rodrigues / Fundacion Comercio Electronico is the current registrant of the names. On Nov 7, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <cabelasclbvisa.com>, <cabelasclubvia.com>, <cabelasclubvsa.com>, <cabelascubvisa.com>, <cabelasclubviss.com>, <cabelasclubvosa.com>, <cabelasclubvusa.com>, <cabelasclybvisa.com>, <cabelasvlubvisa.com>, <cabbelasclubvisa.com>, <cabelascllubvisa.com>, <cabelasclubbisa.com>, <cabelasclubbvisa.com>, <cabelasclubviaa.com>, <cabelasclubvida.com>, <cabelasclubviisa.com>, <cabelasclubvvisa.com>, <cabelascluubvisa.com>, <cabelascluvvisa.com>, <cabelasxlubvisa.com>, <ccabelasclubvisa.com>, <cabelaaclubvisa.com>, <cabelaasclubvisa.com>, and <cabeladclubvisa.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent Li Jin Liang is the current registrant of the names. GoDaddy.com, LLC, NameSilo, LLC, and Chengdu West Dimension Digital Technology Co., Ltd. have verified that Respondents are bound by the respective registration agreements 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 November 15, 2018, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 5, 2018 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@cabelasclbvisa.com, postmaster@cabelasclubcisa.com, postmaster@cabelasclubvia.com, postmaster@cabelasclubvias.com, postmaster@cabelasclubvisaa.com, postmaster@cabelasclubvsa.com, postmaster@cabelascubvisa.com, postmaster@cabelasculbvisa.com, postmaster@cabelassclubvisa.com, postmaster@cabelasclubviss.com, postmaster@cabelasclubvosa.com, postmaster@cabelasclubvusa.com, postmaster@cabelasclybvisa.com, postmaster@cabelasvlubvisa.com, postmaster@cabbelasclubvisa.com, postmaster@cabelascllubvisa.com, postmaster@cabelasclubbisa.com, postmaster@cabelasclubbvisa.com, postmaster@cabelasclubviaa.com, postmaster@cabelasclubvida.com, postmaster@cabelasclubviisa.com, postmaster@cabelasclubvvisa.com, postmaster@cabelascluubvisa.com, postmaster@cabelascluvvisa.com, postmaster@cabelasxlubvisa.com, postmaster@ccabelasclubvisa.com, postmaster@cabelaaclubvisa.com, postmaster@cabelaasclubvisa.com, postmaster@cabeladclubvisa.com, postmaster@cabelasclubsvisa.com, and postmaster@mycabelasvisa.com. Also on November 15, 2018, the Chinese language Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Complainant contends that all of the registrants for the Domain Names are related because: 1) the Domain Names are all similar variants of the phrase “Cabela’s Club Visa”, 2) the Domain Names were registered within a three (3) month period following a decision issued by the Forum involving another domain name that was a variant of the phrase “Cabela’s Club Visa”, and 3) twenty-three of the Domain Names resolve to the exact same webpage, while eight others resolve to virtually identical or similar webpages.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for the remainder of the Decision.
Preliminary Issue: Language of Proceeding
The language of the Registration Agreements in this case is Chinese. The Complaint is in English and Chinese and by implication, requests that pursuant to UDRP Rule 11(a) the language of the Proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. The Domain Names resolve to websites (“Respondent’s Websites”) that are in the English language. Furthermore the Domain Names clearly refer and reflect words in the English language. As such, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence exists to suggest the likely possibility that Respondent is conversant and proficient in the English language.
A. Complainant
Complainant, Cabela’s LLC, is a premier sports and outdoor recreation retailer. Complainant has rights in the CABELA’S CLUB mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,116,567, registered Nov. 25, 1997). The Domain Names are confusingly similar to Complainant’s CABELA’S CLUB mark because Respondent includes the CABELA’S CLUB mark in each domain name, combines it with another mark (“visa”), makes a minor misspelling, and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names because Respondent is not commonly known by the Domain Names and is not authorized or permitted to use Complainant’s CABELA’S CLUB mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the Domain Names to divert users to competing commercial websites.
Respondent registered and uses the Domain Names in bad faith. Respondent engages in a pattern of bad faith registration based on a history of past adverse UDRP decisions and the existence of multiple domain names containing Complainant’s CABELA’S CLUB mark in the present proceeding. Additionally, Respondent attempts to attract, for commercial gain, users to the Domain Names’ websites where it displays links to competing services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CABELA’S CLUB mark. Each of the Domain Names is confusingly similar to Complainant’s CABELA’S CLUB mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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).
Complainant has rights in the CABELA’S CLUB mark based upon registration with the USPTO (e.g., Reg. No. 2,471,539, registered Jul. 24, 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 Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names are confusingly similar to the CABELA’S CLUB mark as each of them bar <mycabelasvisa.com> contains the CABELA’S CLUB mark in its entirety, combines it with a third-party mark (“Visa”, makes a minor misspelling, and adds a gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (“Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); 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 <mycabelasvisa.com> domain name contains the “cabelas” element of the CABELA’S CLUB mark along with the descriptive word “my”, the third party mark “visa” and the gtld “.com”, which are insufficient to distinguish the <mycabelasvisa.com> domain name from the CABELA’S CLUB mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the CABELA’S CLUB mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Zhichao Yang / Carolina Rodrigues / Fundacion Comercio Electronico / Li Jin Liang” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names resolve or have resolved to websites advertising financial services products on a pay-per-click basis. In circumstances where the links have no connection to any descriptive meaning inherent in the Domain Name, the use of a domain name to offer pay-per-click advertisements does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between July 21 and October 8, 2018, Respondent had actual knowledge of Complainant’s CABELA’S CLUB mark. There is no obvious explanation, nor has one been provided, for an entity to register 31 domain names that consist of minor variants of the CABELA’S CLUB mark and “VISA” (an entity that partners with Complainant) and re-direct each of those domain names to pay-per-click sites other than to take advantage of Complainant’s reputation in the CABELA’S CLUB Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s CABELA’S CLUB Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites featuring pay-per-click links. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA 1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <cabelasclbvisa.com>, <cabelasclubcisa.com>, <cabelasclubvia.com>, <cabelasclubvias.com>, <cabelasclubvisaa.com>, <cabelasclubvsa.com>, <cabelascubvisa.com>, <cabelasculbvisa.com>, <cabelassclubvisa.com>, <cabelasclubviss.com>, <cabelasclubvosa.com>, <cabelasclubvusa.com>, <cabelasclybvisa.com>, <cabelasvlubvisa.com>, <cabbelasclubvisa.com>, <cabelascllubvisa.com>, <cabelasclubbisa.com>, <cabelasclubbvisa.com>, <cabelasclubviaa.com>, <cabelasclubvida.com>, <cabelasclubviisa.com>, <cabelasclubvvisa.com>, <cabelascluubvisa.com>, <cabelascluvvisa.com>, <cabelasxlubvisa.com>, <ccabelasclubvisa.com>, <cabelaaclubvisa.com>, <cabelaasclubvisa.com>, <cabeladclubvisa.com>, <cabelasclubsvisa.com>, and <mycabelasvisa.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 13, 2018
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