RGH ENTERPRISES, INC. dba Edgepark Medical Supplies v. Jin Liang Li
Claim Number: FA2004001890573
Complainant is RGH ENTERPRISES, INC. dba Edgepark Medical Supplies (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, United States. Respondent is Jin Liang Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eedgepark.com>, registered with Cloud Yuqu 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2020; the Forum received payment on April 1, 2020.
On April 1, 2020, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <eedgepark.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 April 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@eedgepark.com. Also on April 7, 2020, 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 May 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, RGH Enterprises, INC. dba Edgepark Medical Supplies, is part of the Cardinal Health company that provides pharmaceuticals and medical products and services. Complainant asserts rights in the trademark EDGEPARK through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating to 1993. Respondent’s <eedgepark.com> domain name, registered on December 18, 2019 is confusingly similar to Complainant’s mark because it incorporates the EDGEPARK mark in its entirety, and merely adds the letter “e” to the beginning of the mark as well the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <eedgepark.com> domain name. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s EDGEPARK mark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent previously used the disputed domain name to host a parked page with competing hyperlinks. Currently, Respondent fails to make an active use of the disputed domain name.
Respondent has registered and uses the <eedgepark.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website which features click-through advertisements to third party sites that compete with Complainant. Moreover, Respondent engages in typosquatting by adding the letter “e” to the EDGEPARK mark. Finally, Respondent had actual knowledge or constructive notice of Complainant’s EDGEPARK mark prior to registering the <eedgepark.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 EDGEPARK mark through its registration thereof with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Here, Complainant provides copies of its USPTO registration certificates. Therefore, the Panel finds that Complainant has rights in the EDGEPARK mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <eedgepark.com> domain name is confusingly similar to the EDGEPARK mark because the disputed domain name incorporates the mark in its entirety and merely adds a preceding letter “e” along with the “.com” gTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a gTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Staples, Inc. v. lin yanxiao, FA 1617686 (Forum June 4, 2015) (finding that the <stapeles.com> domain name is confusingly similar to the STAPLES mark, as it merely adds the letter “e” and the gTLD “.com” to Complainant’s mark). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s EDGEPARK mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 does not have rights or legitimate interest in the <eedgepark.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EDGEPARK mark. In considering this issue, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name is “JIN LIANG LI” and nothing in the record indicates that Respondent is known otherwise or that it is authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the <eedgepark.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent uses the disputed domain name to host a parked webpage that contains links to third party sites that compete with Complainant’s business. Use of a domain name to host a parked webpage that contain third party links to Complainant’s competitors may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA 1629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); 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.”) Here, Complainant provides a screenshot of Respondent’s website at the disputed domain name which, until recently, appeared to host pay-per-click links to other sites offering such items as breast pumps and ostomy supplies, which directly compete with Complainant’s business. Thus, the Panel agrees that Respondent’s use of the domain name indicates it lacks rights and legitimate interest in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the <eedgepark.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent now fails to make an active use of the disputed domain name. A respondent has no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides a screenshot that shows the current resolution of the disputed domain name to a “This site can’t be reached” message. Respondent has not filed a response or made any other submission in this case to explain its actions and so, upon the evidence before it, the Panel finds that Respondent’s lack of use of the domain name indicates it lacks rights and legitimate interests in the disputed domain name and fails to make a bona fide offering of goods or services.
Complainant contends that Respondent had both actual and constructive knowledge of the EDGEPARK mark based on Respondent’s use of the <eedgepark.com> domain name and due to Complainant’s USPTO registrations. The Panel here find that any arguments of bad faith based on constructive notice will not be considered because UDRP case precedent declines to find bad faith as a result of constructive knowledge where the Respondent is not resident in a jurisdiction that recognizes such legal principle. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.") The Panel agrees with Complainant, however, that Respondent very likely 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 upon which to build a case 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.”) Here, Complainant claims that because the disputed domain name resolves to a website that includes similar goods as those offered by Complainant, this is evidence that Respondent had actual knowledge of Complainant’s rights in the EDGEPARK mark. Respondent has not participated in this case to refute Complainant’s assertion. The Panel thus finds it more likely than not that Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent registered and uses the <eedgepark.com> domain name in bad faith. Specifically, Complainant claims that Respondent attempted to attract, for commercial gain, users to the disputed domain name which features click-through advertisements that compete with Complainant. Using a confusingly similar domain name to commercially benefit via pay-per-click links can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA 1605757 (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”). As previously noted, Complainant provides screenshots of Respondent’s previous webpage that resolved from the disputed domain name and this hosted links to other site offering items such as breast pumps and ostomy supplies – products that directly compete with Complainant. More recently, the disputed domain name does not resolve to any web content but this has also been held to support a finding of bad faith. See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”) Therefore, upon a preponderance of the submitted evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv) and Policy ¶ 4(a)(iii).
Additionally, Complainant contends that Respondent has engaged in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”) As noted, Respondent merely adds the letter “e” to the beginning of the EDGEPARK mark. Thus, the Panel agrees with Complainant and finds that Respondent’s addition of a single letter to Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent per 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 <eedgepark.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 4, 2020
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