Xerox Corporation v. Wu Yu Wu Yu Yu
Claim Number: FA1911001870284
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fujixerox.store>, registered with Porkbun 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2019; the Forum received payment on November 13, 2019.
On November 8, 2019, Porkbun LLC confirmed by e-mail to the Forum that the <fujixerox.store> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 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@fujixerox.store. 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 11, 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.
A. Complainant
Complainant is in the business of document management services and equipment. Complainant has rights in the FUJI XEROX mark based upon registration with the South Korea Intellectual Property Office (“KIPO”) (e.g. Reg. No. 0,174,704, registered July 11, 1989). Respondent’s <fujixerox.store> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the mark, simply adding a top level domain (“TLD”).
Respondent does not have rights or legitimate interests in the <fujixerox.store> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s FUJI XEROX mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to redirect users to third-party sites that attempt to install malware.
Respondent registered and uses the <fujixerox.store> domain name in bad faith due to a pattern of bad faith registration. Additionally, Respondent uses the disputed domain name to deposit malware on users’ computers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Xerox Corporation (“Complainant”), of Norwalk, CT, USA. Complainant is the owner of domestic and international registrations for the marks XEROX and FUJI XEROX which it has continuously used since at least as early as 1989, in connection with its provision of comprehensive goods and services in the document management field, including products such as copiers, printers, fax machines, scanners, and digital printing and publishing systems.
Respondent is Wu Yu Wu Yu Yu (“Respondent”), of Guangxi, China. Respondent’s registrar’s address is listed as Atlanta, GA, USA. The Panel notes that the disputed domain name was registered on or about February 10, 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 claims rights in the FUJI XEROX mark based upon registration with the KIPO (e.g. Reg. No. 0,174,704, registered July 11, 1989). Registration of a mark with a governmental trademark agency is generally sufficient to establish rights in that mark. See Chevron Intellectual Property LLC v. PAUL DAVID SONG, FA 1800906 (Forum Sep. 26, 2018) (“Registration of a mark with a national trademark agency such as the KIPO is sufficient to establish rights in that mark.”). Based on Complainant’s evidence of registration of its mark with the KIPO, the Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <fujixerox.store> domain name is identical or confusingly similar to Complainant’s because it wholly incorporates the mark, simply adding a TLD. Addition of a TLD is irrelevant in determining whether confusing similarity exists between a disputed domain name and a mark. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Here, Complainant argues that the only difference between the disputed domain name and the FUJI XEROX mark is the addition of the “.store” TLD. The Panel here finds that Respondent’s disputed domain name is confusingly similar to the Complainant’s 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 argues that Respondent does not have rights or legitimate interests in the <fujixerox.store> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. 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). The WHOIS information of record lists the registrant as “Wu Yu Wu Yu Yu,” and Complainant contends that it did not authorize respondent’s use of the mark. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <fujixerox.store> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the disputed domain name to redirect users to third-party sites that attempt to install malware. Use of a domain name to redirect to webpages that offer malicious software is not evidence of rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant provides screenshots of a resolving webpage and claims that it attempts to install malware on users’ computers. The Panel here finds that Respondent has failed to provide proof of any bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Additionally, Complainant argues that Respondent uses the disputed domain name to deposit malware on users’ computers. Attempts to use a disputed domain name to distribute malware is a showing of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). The Panel again notes that Complainant provided screenshots of Respondent’s resolving webpage which Complainant claims is used to distribute malicious software to users. The Panel here finds bad faith registration and use under Policy ¶ 4(a)(iii).
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 <fujixerox.store> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 23, 2019
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