HY-Tape International, INC. v. tony tang / www.hytape.com / dong guan shi rong hao yang guang dian you xian gong si / li ping wu
Claim Number: FA2012001924322
Complainant is HY-Tape International, INC. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck llC, New York, USA. Respondent is tony tang / www.hytape.com / dong guan shi rong hao yang guang dian you xian gong si / li ping wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hytapes.com> and <rhytape.com>, registered with Bizcn.com, Inc.; Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2020; the Forum received payment on December 9, 2020.
On December 10, 2020; December 28, 2020, Bizcn.com, Inc.; Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <hytapes.com> and <rhytape.com> domain names are registered with Bizcn.com, Inc.; Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Bizcn.com, Inc.; Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Bizcn.com, Inc.; 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 January 5, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 25, 2021 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@hytapes.com, postmaster@rhytape.com. Also on January 5, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant develops and manufactures various adhesive products. Complainant claims rights in the HY-TAPE mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,599,167, registered June 5, 1990; Reg. 2,332,201, registered Mar. 21, 2000). See Compl. Ex. E. Respondent’s <hytapes.com> and <rhytape.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety, remove the hyphen, add either the letters “r” or “s”, and add the “.com” generic top-level domain (“gTLD”) to the end of the mark.
Respondent lacks rights and legitimate interests in the <hytapes.com> and <rhytape.com> domain names. Respondent is not commonly known by either name, nor has Complainant authorized or licensed Respondent to use its HY-TAPE mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to the disputed domain names’ resolving websites, where Respondent sells related and competing products.
Respondent registered and uses the <hytapes.com> and <rhytape.com> domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by selling competing and related products on the disputed domain names’ resolving websites. Additionally, Respondent registered the disputed domain names with knowledge of Complainant’s rights in the HY-TAPE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that develops and manufactures various adhesive products.
2. Complainant has established its trademark rights in the HY-TAPE mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,599,167, registered Jun. 5, 1990; Reg. 2,332,201, registered Mar. 21, 2000).
3. Respondent registered the <hytapes.com> and <rhytape.com> domain names on August 20, 2011 and October 21, 2016 respectively.
4. Respondent uses the domain names to attempt to divert internet users to the disputed domain names’ resolving websites, where Respondent sells related and competing products.
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”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Complainant contends that the WHOIS information provided is clearly fictitious, while both identify the Guangdong province of South China, both utilized WHOIS privacy services, and both utilize similar misspellings of Complainant’s HY-TAPE mark.
The Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and, accordingly, that the domain names are registered by the same domain name holder within the meaning of paragraph 3(c) of the Rues. Accordingly, the matter may proceed on that basis.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings to be in Chinese. Complainant did not submit a Chinese language Complaint although it did submit a Chinese language Commencement Notification. However, Complainant submits that the proceeding should be conducted in English and argues that since the resolving websites are in English, Respondent should be presumed to be fluent in English, and since translation would cause Complainant burden, the proceedings should continue in English.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Commencement Notification, and, absent a Response, determines for the foregoing reasons, that the remainder of the proceedings may be conducted in English.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the HY-TAPE mark through its registrations with the USPTO. (e.g. Reg. 1,599,167, registered Jun. 5, 1990; Reg. 2,332,201, registered Mar. 21, 2000). See Compl. Ex. E. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, as the Panel agrees, it finds Respondent has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s HY-TAPE mark. Complainant argues that Respondent’s <hytapes.com> and <rhytape.com> domain names are identical or confusingly similar to its HY-TAPE mark. Under Policy ¶ 4(a)(i), removal of a hyphen and the addition of a single letter, as well as a gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Albertson’s, Inc. v. Bennett, FA 117013 (Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”); AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The disputed domain names incorporate Complainant’s HY-TAPE mark in its entirety, remove the hyphen, and add either the letter “r” to the front or the letter “s” to the back of the mark, as well as the “.com” gTLD to the end. Therefore, as the Panel agrees, it finds Respondent’s disputed domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) Complainant has thus made out the first of the three elements that it must establish.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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”).
(a) Respondent has chosen to take Complainant’s HY-TAPE trademark and to use it in its domain names, with only minor typographical alterations which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <hytapes.com> and <rhytape.com> domain names on August 20, 2011 and October 21, 2016 respectively;
(c) Respondent uses the domain names to attempt to divert internet users to the disputed domain names’ resolving websites, where Respondent sells related and competing products;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <hytapes.com> or <rhytape.com> domain names and is not authorized to use the HY-TAPE mark. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a mark further suggests that a respondent is not known by a domain name incorporating the mark. 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 of record identifies Respondent as “Tony Tang” and “dong guan rong hao yang guang dian you zian gong si”. See Amend. Compl. Exs. A and A-1. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <rhytape.com> and <hytapes.com> domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), attempting to divert internet users to a disputed domain name’s resolving website, where Respondent competes with Complainant’s business or services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain names’ resolving websites, which feature similar and competing products for sale. See Compl. Exs. C and C-1. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <rhytape.com> and <hytapes.com> domain names for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name’s resolving website to host competing products or services is generally considered bad faith disruption for commercial gain. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which feature similar and/or competing adhesive products for sale. See Compl. Exs. C and C-1. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the HY-TAPE mark. Evidence that a respondent had actual knowledge of a Complainant’s mark at the time of domain name registration supports a finding of bad faith per Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); 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 submits that Respondent’s use of the HY-TAPE mark was by choice based upon the similarity between the domain names and the mark and Respondent’s use of the domain names to attract Complainant’s customers. As the Panel agrees that actual knowledge is evident, the Panel finds bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hytapes.com> and <rhytape.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 3, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page