Raymond Dalio & Dalio Foundation, Inc. v. Zhang Jia
Claim Number: FA2006001900031
Complainants are Raymond Dalio & Dalio Foundation, Inc. (collectively, “Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, United States of America (“United States”). Respondent is Zhang Jia (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <raydaliofoundation.org> (the “disputed domain name”, registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2020; the Forum received payment on June 12, 2020.
On June 16, 2020, the Registrar confirmed by e-mail to the Forum that the <raydaliofoundation.org> disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the disputed domain name. The Registrar has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 June 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@raydaliofoundation.org. Also on June 18, 2020, the Written Notice of the Complaint in both English and Chinese, 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 July 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a billionaire hedge fund manager that operates Complainant Dalio Foundation, a charitable organization. Complainant has common law rights in the trademark RAY DALIO and also has rights in the DALIO trademark through its registration of the mark in China (e.g. Reg. No. 36009847, registered Sep. 14, 2019). Complainant also has rights in the DALIO FOUNDATION trademark based on registration of the trademark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 5,612,029. registered Nov. 20, 2018) (collectively, the “RAY DALIO Mark” and/or the “DALIO FOUNDATION Mark”).
The disputed domain name is identical or confusingly similar to the RAY DALIO and DALIO FOUNDATION Mark as it adds the dictionary term "foundation" to Complainant's RAY DALIO Mark or alternatively adds the term "ray" to Complainant's DALIO FOUNDATION Mark. Also appended to the disputed domain name is the ".org" generic Top-Level Domain (gTLD), which does not prevent confusing similarity between the disputed domain name and the RAY DALIO or DALIO FOUNDATION Mark. Respondent lacks rights or legitimate interests in the disputed domain name and Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds valid trademark rights in the RAY DALIO Mark and the DALIO FOUNDATION Mark. The disputed domain name is confusingly similar to Complainant’s RAY DALIO Mark and the DALIO FOUNDATION Mark. Further, the Panel concludes that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name 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 disputed 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 disputed domain name; and
(3) the disputed 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”).
Preliminary Issue: Required Language of Complaint
Prior to discussing the three elements of the Policy, the Panel must decide the language of the proceedings. The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese, in accordance with UDRP Rule 11(a).
However, pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, giving regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See The Wawanesa Mutual Insurance Co. v. Li Hou Chang, FA 2001001881099 (Forum March 3, 2020) (deciding that the proceedings may be conducted in English without prejudice to the Respondent, because the Forum provided notice of the proceedings and had sent other procedural documents to the Respondent in both Chinese and English, yet the Respondent had not provided a Response or made any other submission in this case).
Pursuant to Rule 11(a), the Panel determines that Respondent is capable of proceeding in English because the disputed domain name contains an English word, English is a common language in business and travel, and Complainant would incur additional cost and delay if required to translate the document. In addition, the Panel concludes that the language requirement has been satisfied through the Commencement Notification that was sent to Respondent in Chinese and English, and, since Respondent did not submit a Response, nor did Respondent submit a request to receive the Complaint and annexes in Chinese, the Panel has decided that the remainder of the proceedings may be conducted in English.
Preliminary Issue: Multiple Complainants
The Forum’s Supplemental Rule 1(e) states: The party commencing a proceeding concerning a domain name registration is “a single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Such a nexus for multiple parties may be satisfied by showing one complainant is the owner of or controls the other. See Jim Hudson and Jim Hudson Cars of Lexington SC, LLC v. Don Cook, FA 1377844 (Forum Apr. 20, 2011). That is precisely the case here. Complainant Raymond Dalio is the founder of and controls Complainant Dalio Foundation, Inc., which bears his family name. Therefore, Raymond Dalio and the Dalio Foundation are both proper Complainants in this proceeding.
The Panel finds that Complainant has common law rights in the RAY DALIO Mark. Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the trademark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “the Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce and that consumers have come to associate the mark with the complainant as to the source of the goods. See Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) (“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant as to the source of the goods.”). Complainant has used the RAY DALIO Mark and DALIO FOUNDATION Mark in connection with numerous business and philanthropic endeavors, and in connection with Complainant's own book, and in extensive media coverage. As a result, the Panel concludes that Complainant holds common law rights in the RAY DALIO Mark and DALIO FOUNDATION Mark for purposes of Policy ¶ 4(a)(i).
The Panel also finds that Complainant owns trademark rights in the DALIO FOUNDATION Mark based on registration of the mark with the USPTO (e.g. Reg. No. 5,612,029, registered Nov. 20, 2018). Registration of a mark with the USPTO sufficiently confers upon a complainant 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.”). Accordingly, the Panel finds that Complainant has established rights in the RAY DALIO mark for the purposes of Policy ¶ 4(a)(i).
The Panel next concludes that the disputed domain name is confusingly similar to the RAY DALIO Mark under the Policy as the disputed domain name incorporates the trademark in its entirety, followed by the dictionary term “foundation” and then followed by the gTLD “.org”. Such additions to the disputed domain name are not sufficient to distinguish the disputed domain name from the RAY DALIO or DALIO FOUNDATION Mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Names. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the RAY DALIO Mark or DALIO FOUNDATION Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
In addition, Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent does not make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Respondent registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶4(b)(iv)). Here, Respondent created a likelihood of confusion with Complainant and its RAY DALIO Mark by registering a disputed domain name that incorporates in its entirety Complainant’s RAY DALIO Mark.
Moreover, Respondent registered and is using the disputed domain name in bad faith as Respondent does not make active use of the disputed domain name. Inactive holding of a disputed domain name may indicate bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (FORUM June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays the error message “This site can’t be reached.” Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <raydaliofoundation.org> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: July 24, 2020
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