The Board of Regents of The University of Texas System v. Chen Zuxin
Claim Number: FA2004001891227
Complainant is The Board of Regents of The University of Texas System (“Complainant”), represented by Alexandra H. Bistline of Pirkey Barber PLLC, United States. Respondent is Chen Zuxin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <longhornsteamstore.com>, registered with 1API GmbH.
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 7, 2020; the Forum received payment on April 7, 2020.
On April 8, 2020, 1API GmbH confirmed by e-mail to the Forum that the <longhornsteamstore.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@longhornsteamstore.com. Also on April 8, 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 April 29, 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, The Board of Regents of the University of Texas System, is a Texas state agency established for the purpose of governing the University of Texas System of higher education. Complainant has rights in the trademark LONGHORNS based upon it use in commerce since 1914 and its registration with the United States Patent and Trademark Office (“USPTO”) dating back to 1983. Respondent’s <longhornsteamstore.com> domain name, registered on March 16, 2017, is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s LONGHORNS mark in its entirety, simply tacking on the generic phrase “team store” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <longhornsteamstore.com> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s LONGHORNS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert users to its own website where Respondent offers counterfeit goods.
Respondent registered and uses the <longhornsteamstore.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Further, Respondent has actual knowledge of Complainant’s rights in the LONGHORNS mark.
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 claims rights in the LONGHORNS mark based upon its registration thereof with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a 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 demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Complainant provides copies of its USPTO registration certificates and so the Panel finds that it has rights in the mark under Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <longhornsteamstore.com> domain name is identical or confusingly similar to the LONGHORNS mark because it incorporates the mark in its entirety, simply tacking on the generic phrase “team store” to form the disputed domain name. The domain name also includes the “.com” generic top-level domain (“gTLD”). Addition of generic and/or descriptive terms and a gTLD to a mark rarely negates any confusing similarity between a disputed domain name and that mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) Thus, the Panel may find that the disputed domain name is identical or confusingly similar to Complainant’s LONGHORNS mark under 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 interests in the <longhornsteamstore.com> domain name since Respondent is not licensed or otherwise permitted to use Complainant’s LONGHORNS mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Additionally, lack of authorization to use a mark may constitute further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA 1620789 (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). Here, the WHOIS information of record identifies the Respondent as “Chen Zuxin” and no information suggests that it is known otherwise or that it has been authorized to use the LONGHORNS mark in any way. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use but rather uses the disputed domain name to offer counterfeit goods for sale. Use of a disputed domain name to attract internet users for the sale of counterfeit goods is not considered a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Complainant provides screenshots of Respondent’s websites, as well as individual examples of the counterfeit products offered by Respondent. In particular, it points out that Respondent offers team jerseys bearing the names of individual student athletes despite the fact that Complainant neither offers nor licenses the sale of any items bearing student athlete names. The Panel also notes that the prices listed at Respondent’s website are significantly discounted. The Respondent has not filed a response or made any other submission in this case to rebut this prima facie claim that its products are counterfeit. Therefore, upon a preponderance of the evidence before it, the Panel finds that Respondent is not using the disputed domain name for 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).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the LONGHORNS mark at the time it registered the disputed domain name. Actual knowledge of rights in a mark may be shown through a respondent’s use of the disputed domain name to offer competing or unlicensed goods under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that Respondent must have been aware of Complainant’s rights in the LONGHORN mark since Respondent is using the domain name to sell counterfeit products that specifically target Complainants marks and business. The Panel agrees and finds that Respondent registered the <longhornsteamstore.com> domain name with actual knowledge of Complainant’s trademark.
Complainant goes on to argue that Respondent registered and uses the <longhornsteamstore.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain by selling unlicensed products. The use of a disputed domain name to sell counterfeit products is often accepted as evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seems 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 Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain from its activities by selling counterfeit products at its website, thus creating confusion as to a connection with the complainant and demonstrating bad faith per Policy ¶ 4(b)(iv)). As noted above, the screenshots of Respondent’s website provided by Complainant support the claim that counterfeit products are being offered as it displays team jerseys at significantly discounted prices and bearing the names of student athletes (student names are never used on Complainant’s legitimate jerseys). Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <longhornsteamstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 30, 2020
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