GrinOn Industries LLC v. liu hong fu / ji nan zhi gao wu shang ji xie she bei ke ji you xian gong si
Claim Number: FA2002001882607
PARTIES
Complainant is GrinOn Industries LLC (“Complainant”), represented by Todd W. Wight of Rutan & Tucker LLP, California. Respondent is liu hong fu / ji nan zhi gao wu shang ji xie she bei ke ji you xian gong si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bottomsupbeer.net>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Paddy Tam as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2020; the Forum received payment on February 10, 2020. The Complainant was submitted in both Chinese and English.
On February 12, 2020, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <bottomsupbeer.net> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 February 20, 2020, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 11, 2020 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@bottomsupbeer.net. Also on February 20, 2020, the Chinese language 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.
A timely Response was received and determined to be complete on February 20, 2020.
On February 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paddy Tam 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, GrinOn Industries LLC, is the creator of the Bottoms Up Draft Beer Dispensing System, a patented system used in bars and restaurants in over forty countries. Complainant has rights in the BOTTOMS UP mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,758,261, registered Mar. 9, 2010). Respondent’s <bottomsupbeer.net> domain name is identical or confusingly similar to Complainant’s BOTTOMS UP mark as it incorporates the mark in its entirety, merely adding the term “beer” and a “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bottomsupbeer.net> domain name. Respondent is not licensed or authorized to use Complainant’s BOTTOMS UP mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent passes itself off as Complainant and uses the disputed domain name to resolve to a website in which it advertises and sells what purports to be a counterfeit or infringing version of Complainant’s patented beer dispensing system. Respondent may alternatively or additionally use the disputed domain name in furtherance of a phishing scheme.
Respondent registered and uses the <bottomsupbeer.net> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business, attract Internet users to its website, and commercially benefit via sale of counterfeit products and/or phishing. Additionally, Respondent had actual knowledge of Complainant’s rights in the BOTTOMS UP mark.
B. Respondent
Respondent, liu hong fu / ji nan zhi gao wu shang ji xie she bei ke ji you xian gong si li cheng qu yin feng tang jun zi wei, did not provide in its response information about the nature of its business. Respondent denies it is infringing on Complainant’s rights in the BOTTOMS UP mark. The <bottomsupbeer.net> domain name is sufficiently differentiated from Complainant’s mark through the addition of the term “beer”. Although Complainant owns trademark rights in BOTTOMS UP mark, the mark is not well-known.
Respondent denies that it is selling counterfeit or infringing versions of Complainant’s beer dispensing system, rather, it owns patent rights in China for its beer dispensing system. Respondent denies that it uses the disputed domain name in furtherance of a phishing scheme. Respondent denies it is passing off as Complainant because its resolving website uses “obvious Chinese enterprise logo and china-specific product design elements” which differ from Complainant’s website design. Respondent does not compete with Complainant because Respondent operates in China and is not aware that Complainant sells its products in China.
The <bottomsupbeer.net> domain name was registered on November 7, 2019.
1. Complainant has been using the BOTTOMS UP Trademark since 2008;
2. Complainant owns several BOTTOMS UP Trademarks in different jurisdictions;
3. Complainant also owns 6 Patents in China which the earliest one was filed on May 19, 2009 and issued on July 1, 2015;
4. Respondent owns a Patent in China which was applied on May 18, 2015 and issued on May 3, 2017;
5. Respondent did not indicate owning any Trademarks identical or similar to the term BOTTOMS UP or BOTTOMS UP BEER;
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.
Preliminary Issue 1: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese as confirmed by the domain registrar and the Complaint was filed in English together with a Chinese translation. Although Respondent did not file an official response by using the Response Form, it responded via an email written in English.
The Panel is bilingual and is well equipped to deal with the proceeding in both Chinese and English.
Having considered the circumstances and in absence of an agreement between the parties, the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, decides that the remainder of the proceedings to be conducted in English.
Preliminary Issue 2: Scope of UDRP
The Panel notes that apart from the present domain dispute, both parties argue about a genuine contestable issue on registered Patent Rights. Before ruling on the present domain name dispute, the Panel needs to highlight that UDRP is designed to decide cybersquatting cases instead disputes where a patent is the subject of a larger business dispute.
On this basis, the Panel hereby limits the scope of the present case to the domain name <bottomsupbeer.net> and the relevant trademark rights. Any dispute related to the mentioned Patent rights should be resolved in a competent legal forum.
To satisfy the first element under Policy ¶ 4(a), a Complainant needs to prove its rights in a trademark and the domain names are identical and/or confusingly similar to the trademark.
First, The Complainant claims rights in the BOTTOMS UP mark based upon registration of the mark with the USPTO (e.g., Reg. No. 3,758,261, registered Mar. 9, 2010). Registration of a mark with the USPTO may be sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Respondent contends that Complainant’s BOTTOMS UP mark is not well-known in China, where Respondent does business. In light of considering the jurisdiction of the Trademark rights that Complainant may hold, the Panel hereby address that due to the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element of UDRP. The Panel therefore holds that Complainant’s registration of the BOTTOMS UP mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Second, The Complainant argues Respondent’s <bottomsupbeer.net> domain name is confusingly similar to the BOTTOMS UP mark, as the name incorporates the mark in its entirety along with the term “beer” and a “.net” gTLD. Such changes may not be sufficient to distinguish a domain name from an incorporated mark under 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 determines the <bottomsupbeer.net> domain name is confusingly similar to the BOTTOMS UP mark per Policy ¶ 4(a)(i)
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(i).
To satisfy the second element under Policy ¶ 4(a), the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the domain names, and the burden of prove then shifts to the 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <bottomsupbeer.net> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BOTTOMS UP mark in any way. Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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). The WHOIS information of record identifies the registrant of the disputed domain name as “liu hong fu / ji nan zhi gao wu shang ji xie she bei ke ji you xian gong si li cheng qu yin feng tang jun zi wei” (刘红福 / 济南至高无上机械设备科技有限公司 (in Chinese)) and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s BOTTOMS UP mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <bottomsupbeer.net> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <bottomsupbeer.net> domain name is demonstrated by its failure to use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant contends that Respondent uses the disputed domain name’s resolving website to pass off as Complainant and sell what purports to be a counterfeit or infringing version of Complainant’s patented beer dispensing system. Use of a domain name to sell counterfeit versions of a complainant’s products may not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or services and no legitimate noncommercial or fair use where a respondent used the website resolving from a challenged domain name to sell products branded with a UDRP complainant’s mark, and which were either counterfeit products or actual products of Complainant being resold without its authorization). Complainant provides screenshots of Respondent’s resolving website, which displays advertisement and sale of unique beer dispensing system and accessories, which appear and are described as identical to Complainant’s patented beer dispensing system. The Panel therefore finds Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant additionally contends that Respondent uses the disputed domain name in furtherance of a phishing scheme. Use of a domain name in furtherance of a phishing scheme is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). Complainant contends that Respondent may use the disputed domain name’s resolving website to collect Internet users’ personal and financial information for its own commercial benefit. The Panel agrees and finds Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Although the Panel does not agree that the use of the <bottomsupbeer.net> domain name to launch a phishing scheme due to lack of clear and convincing evidence, the Panel finds that the Complainant has established a prima facie case and the burden of proof shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c):
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, Respondent denies that it is selling counterfeit or infringing versions of Complainant’s beer dispensing system. Furthermore, Respondent denies that it uses the disputed domain name in furtherance of a phishing scheme. Respondent also denies it is passing off as Complainant because its resolving website uses “obvious Chinese enterprise logo and china-specific product design elements” which differ from Complainant’s website design.
Having reviewed the screenshots on the website resolved by the <bottomsupbeer.net> domain name and the WHOIS information provided by the domain registrar, the Panel notes neither the Respondent nor its company names is related to the domain name. In addition, the Panel further notes from the product introduction that Respondent’s beverage dispensing system is branded as “至高无上” and “AAJ” instead of “Bottoms Up” or “Bottoms Up Beer”.
On this basis, the Panel is of the view that Respondent fails to it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(ii).
To satisfy the third element under Policy ¶ 4(a), the Complainant must prove both the registration and use of the domain names are in bad faith.
First, the complainant contends that in light of the fame and notoriety of its BOTTOMS UP mark, it is inconceivable that Respondent could have registered the <bottomsupbeer.net> domain name without actual or constructive knowledge of Complainant's rights in the mark. Considering to both parties are on the same industry and selling very similar products, the Panel agrees that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds that Respondent registered the name in bad faith under Policy ¶ 4(a)(iii).
Second, the Complainant contends that Respondent uses the <bottomsupbeer.net> domain name in bad faith. Specifically, Complainant contends that Respondent uses the disputed domain name to disrupt Complainant’s business, attract Internet users to its website, and commercially benefit via sale of counterfeit products. Use of a disputed domain name to direct Internet users to its infringing, counterfeit products may constitute bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Complainant provides screenshots of Respondent’s resolving website, which displays advertisement and sale of a unique beer dispensing system and accessories, which appear and are described as similar to Complainant’s beer dispensing system. Despite the Respondent denies that it is selling counterfeit or infringing versions of Complainant’s beer dispensing system, it does not provide any supporting documents. Therefore, the Panel finds that Respondent was using the <bottomsupbeer.net> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
For the foregoing reasons, the Panel finds the 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 <bottomsupbeer.net> domain name be TRANSFERRED from Respondent to Complainant.
Paddy Tam, Panelist
Dated: February 29, 2020
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