Oboleo Ltd. v. bao chen
Claim Number: FA2012001926212
Complainant is Oboleo Ltd. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is bao chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thesecretbenefits.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2020; the Forum received payment on December 23, 2020.
On December 24, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thesecretbenefits.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 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@thesecretbenefits.com. Also on December 30, 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 January 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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
i) Complainant is the owner and operator of “SECRET BENEFITS,” an online dating website. Complainant has rights in the SECRET BENEFITS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,958,569, registered January 14, 2020). Complainant has also used the SECRET BENEFITS mark since March 2016 in connection with the domain name <secretbenefits.com>, and has engaged in substantial promotion of the mark. The disputed domain name is identical or confusingly similar to Complainant’s SECRET BENEFITS mark because it is a minor variation of Complainant’s mark.
ii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent previously used the disputed domain name to compete with Complainant. Furthermore, the disputed domain name now fails to resolve to an active website.
iii) Respondent registered and uses the disputed domain name in bad faith as Respondent previously used the disputed domain name to compete with Complainant.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on July 18, 2019.
2. Complainant has established rights in the SECRET BENEFITS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,958,569, registered January 14, 2020).
3. The date of first use in commerce of Complainant’s mark is March 15, 2016 and its filing date is March 15, 2018.
4. Respondent previously used the disputed domain name to compete with Complainant.
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 SECRET BENEFITS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,958,569, registered January 14, 2020). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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).”). Therefore, the Panel finds Complainant has demonstrated rights in the SECRET BENEFITS mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s SECRET BENEFITS mark because it is only a minor variation of Complainant’s mark. Adding a generic term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per 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). Complainant argues that Respondent incorporates the mark in its entirety and adds the generic term “the” along with the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s 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), 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”).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent previously used the disputed domain name to compete with Complainant. Using a confusingly similar domain name to compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant argues that prior to the original complaint in this matter, the disputed domain name resolved to a site purporting to offer membership in an online dating website. Clicking on the “sign up” button transfers the visitor to a website denominated SugarDaddyMeet.com, which is a direct competitor of the Complainant. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent further fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name now fails to resolve to an active website. Failing to make active use of a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Complainant argues that the disputed domain name was temporarily disabled since filing of the initial complaint in this matter, and the domain name currently resolves to a page indicating it has been disabled. Therefore, the Panel further finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 name.
Complainant contends Respondent registered and uses the disputed domain name in bad faith. The Panel notes that the registration of the disputed domain name (registered on July 18, 2019) predates the registration date of Complainant’s SECRET BENEFITS mark (registered on January 14, 2020). Complainant submits that it has been using the inherently distinctive “SECRET BENEFITS” mark for online dating since its website was launched in March 2016, and that its reputation has grown since that time. Complainant has provided the historical archives and screenshots of its website respectively captured by Archive.org and DomainTools. The Panel notes that the DomainTools.com screenshot archive shows the graphical layout, as can be seen from the records dated in July 2016 and April 2017. Complainant further contends that it has engaged in substantial promotion of the mark, such as through sponsored articles in online publications such as at Maxim.com (February 6, 2018) and Observer.com (May 8, 2018) shown in its Exhibit. The Panel also notes that the date of first use in commerce of Complainant’s mark is March 15, 2016 as shown in the pertinent certificate of Complainant’s trademark registration and its filing date is March 15, 2018. Therefore, the Panel finds that Complainant can prove the registration of the disputed domain name in bad faith per Policy ¶ 4(a)(iii) even though Respondent’s registration of the disputed domain name predates the registration of Complainant’s SECRET BENEFITS mark.
Complainant contends that Respondent used the disputed domain name to compete with Complainant. Using a confusingly similar domain name to offer competing services can demonstrate bad faith per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). The Panel recalls that Complainant argues the disputed domain name previously resolved to a site purporting to offer membership in an online dating website. Clicking on the “sign up” button transfers the visitor to a website denominated SugarDaddyMeet.com, which is a direct competitor of the Complainant. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(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 <thesecretbenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 25, 2021
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