Great Eastern Resort Management, Inc. v. Shifty Zhang / WEST EDGE TECH SERVICES, INC.
Claim Number: FA1911001870069
Complainant is Great Eastern Resort Management, Inc. (“Complainant”), represented by Christel E. Harlacher, of Williams Mullen c/o IP Docketing, Virginia, USA. Respondent is Shifty Zhang / WEST EDGE TECH SERVICES, INC. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rentmassanutten.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 November 6, 2019; the Forum received payment on November 6, 2019.
On November 10, 2019, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <rentmassanutten.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 November 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2019 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@rentmassanutten.com. Also, on November 18, 2019, 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 December 13, 2019 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that Respondent is capable of understanding English given that: Respondent uses the English terms “rent” and “Massanutten” in the disputed domain name; the name of Respondent’s affiliated corporation is comprised of English terms; the name “Shifty” is a term that is used as a name or nickname in English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant uses the MASSANUTTEN mark in connection with hospitality and vacation resort services. Complainant has rights in the MASSANUTTEN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,297,371, registered Mar. 5, 2013). Respondent’s <rentmassanutten.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark and adds the term “rent” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <rentmassanutten.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 fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to Respondent’s own webpage which displays pornographic content.
Respondent registered and uses the <rentmassanutten.com> domain name in bad faith. Respondent disrupts Complainant’s business by using the disputed domain name to divert Internet users to Respondent’s webpage which displays pornographic content.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is Great Eastern Resort Management, Inc. (“Complainant”), of McGahesyville, Virginia, USA. Complainant is the owner of the domestic registration for the mark MASSANUTTEN, and related domestic marks comprising the family of Massanutten marks. Complainant has continuously used the mark since at least as early as 1973, in connection with its provision of vacation real estate rental services, ski resorts and waterparks, and related lodging services.
Respondent is Shifty Zhang / WEST EDGE TECH SERVICES, INC. (“Respondent”), of Osaka, Japan. Respondent’s registrar’s address is listed as Tokyo, Japan. The Panel notes that Respondent registered the <rentmassanutten.com> domain name on or about July 28, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the MASSANUTTEN mark based on registration with the USPTO. 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 Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 4,297,371, registered Mar. 5, 2013). The Panel here finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <rentmassanutten.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark and adds the term “rent” and the generic top-level domain (“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 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). The Panel here finds that the <rentmassanutten.com> domain name is confusingly similar to the 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 notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <rentmassanutten.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Shifty Zhang,” and Respondent has provided no evidence to prove that Respondent was authorized to use the MASSANUTTEN mark. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent fails to use the <rentmassanutten.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to divert Internet users to Respondent’s own webpage which displays pornographic content. Use of a disputed domain name to host adult-oriented material is generally not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant provides screenshots of the resolving webpage of the disputed domain name which displays pornographic content. The Panel here finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent registered and uses the <rentmassanutten.com> domain name in bad faith as Respondent disrupts Complainant’s business by using the disputed domain name to divert Internet users to Respondent’s webpage which displays pornographic content. Use of a confusingly similar domain name to divert Internet users to a website that conveys a false or tarnishing message regarding a complainant can demonstrate bad faith registration and use per Policy ¶ 4(b)(iii). See Philip Morris USA Inc. v. Hector Serra, THZ, D2017-0084 (WIPO April 18, 2017) (holding the domain <marbloromj.com> was used in bad faith because it conveyed the false and tarnishing message that Phillip Morris sold Marlboro brand marijuana cigarettes and the website linked to the domain name offered no content to explain or correct the false message). Complainant argues, and provides screen shot evidence supporting the assertion, that Respondent uses the disputed domain name to display pornographic content that disrupts Complainant’s business. The Panel here finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant argues Respondent registered and uses the <rentmassanutten.com> domain name in bad faith as Respondent disrupts Complainant’s business by using the disputed domain name to divert Internet users to Respondent’s webpage. Use of a disputed domain name to divert Internet users searching for a complainant’s website to a respondent’s own website and likely profiting can show bad faith registration and use per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant argues that the disputed domain name diverts internet users searching for Complainant’s website and commercially gains by hosting pornographic material on the resolving webpage. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
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 <rentmassanutten.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 27, 2019
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