Oboleo Ltd. v. li xiaofen
Claim Number: FA2012001926213
Complainant is Oboleo Ltd. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is li xiaofen (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <secret-benefits.org>, 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.
Steven M. Levy, 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 <secret-benefits.org> 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 29, 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@secret-benefits.org. Also on December 29, 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 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, Oboleo Ltd., is the owner and operator of an online dating website. Complainant has rights in the trademark SECRET BENEFITS as shown by its registration with the United States Patent and Trademark Office (“USPTO”) dated January 14, 2020 (based on an application filed on March 15, 2018). Complainant also has common law rights in the mark based upon its use in commerce since 2016. Respondent’s <secret-benefits.org> domain name, registered on August 10, 2019, is confusingly similar to Complainant’s mark since it is a minor variation of the mark, merely adding a hyphen and the “.org” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <secret-benefits.org> domain name because Complainant did not authorize or license Respondent to use the SECRET BENEFITS mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services and it does not make a legitimate noncommercial or fair use of the domain name. Instead, Respondent uses the disputed domain name to pass itself off as Complainant and promote competing online dating services.
Respondent registered and uses the <secret-benefits.org> domain name in bad faith. Respondent uses the disputed domain name to redirect Internet traffic to one of Complainant’s competitors.
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 and evidence 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 and supported 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 based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a copy of its USPTO trademark registration certificate. Therefore, the Panel finds that Complainant has rights in the SECRET BENEFITS mark under Policy ¶ 4(a)(i).
Complainant also asserts common law rights in the SECRET BENEFITS mark through continuous use of the mark since 2016. Registration of a mark is unnecessary under Policy ¶ 4(a)(i) if the complainant can show common law rights in the mark. 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.”) Common law rights may be established by showing the mark has developed a secondary meaning through its use in commerce. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). Complainant submits a series of archived images of its <secretbenefits.com> website dated back to 2016 thus demonstrating that it has continuously provided its services in connection with the mark since that time. It further provides copies of sponsored news articles that have been written about its service. This evidence demonstrates that Complainant has engaged in promotion of its claimed mark sufficient to develop a brand reputation that predates its trademark registration as well as the creation of the disputed domain name. Thus, the Panel finds that Complainant has common law rights in the SECRET BENEFITS mark dating back to 2016 per Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s <secret-benefits.org> domain name is confusingly similar to Complainant’s mark. Specifically, Complainant argues that Respondent merely adds a hyphen and a gTLD to Complainant’s SECRET BENEFITS mark. Such minor changes do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). As Respondent merely adds a hyphen and the “.org” gTLD to Complainant’s SECRET BENEFITS mark. The Panel agree with Complainant and find that the <secret-benefits.org> 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). 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 <secret-benefits.org> domain name because Complainant did not authorize or license Respondent to use the SECRET BENEFITS mark. Lack of authorization to use a mark, along with relevant WHOIS information, can support a finding that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(a)(ii). 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.) Here, the WHOIS information lists the registrant of the disputed domain name as “Li Xiaofen” and nothing in the record suggests that Respondent is known otherwise or that Complainant authorized Respondent’s use of the SECRET BENEFITS mark. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <secret-benefits.org> domain name in connection to a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof and instead seeks to pass itself off as Complainant to promote competing online dating services. Use of a disputed domain name in competition with a Complainant is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Here, Complainant claims that the resolving webpage purports to offer online dating services in competition with Complainant. Complainant provides a screenshot of the resolving page at the disputed domain and this displays a “Join for Free” button and, below that, the phrase “Getting Started on Secret Benefits Website”. Further down Respondent’s page are displayed the addresses and descriptions of online dating sites that appear to be competitive with Complainant. It notes that clicking the “Join for Free” button on the page redirects users to a known competitor of Complainant’s called SugarDaddyMeet.com. Respondent has not filed a Response nor has it made any other submission or appearance in this case and so it does not rebut Complainant’s prima facie case. By a preponderance of the evidence before it, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor does it make a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(i).
Complaint notes that its rights in the SECRET BENEFITS mark predate registration of the disputed domain name and, although not expressly stated, implies that Respondent had actual knowledge of the mark at the time it registered the domain name. Actual knowledge of a Complainant’s pre-existing rights in a mark may provide the foundation upon which a finding of bad faith can be built under Policy ¶ 4(a)(iii) and can be shown by the entirety of circumstances surrounding registration and use of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”) With respect to the SECRET BENEFITS mark, Complainant asserts that it “has engaged in substantial promotion of the mark” and that “its reputation has grown since” its launch in 2016. In support, it provides archived screenshots of its own <secretbenefits.com> website as well as copies of solicited news articles in which the mark is featured, all of which predate registration of the disputed domain name. Such prior brand-building efforts combined with the fact that Respondent’s website uses Complainant’s mark to promote online dating services that are identical to those provided by Complainant creates the clear impression that Respondent had actual knowledge of the mark at the time the disputed domain name was registered.
Complainant further claims that Respondent registered and uses the <secret-benefits.org> domain name in bad faith because Respondent uses the disputed domain name to redirect Internet traffic to a third-party who is one of Complainant’s competitors. Use of a disputed domain name to promote goods and/or services that compete with a complainant may be evidence of bad faith per Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA 1611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website that competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). As previously noted, Complainant provides a screenshot of the website resolving at the disputed domain name claiming that it uses Complainant’s mark to promote a monetized link to an online dating service called SugarDaddyMeet.com that is in direct competition with Complainant’s dating service. Respondent has submitted no counter argument or evidence and Complainant’s case that its mark was specifically targeted is both supported and persuasive. As such, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv) based on Respondent’s attraction of customers for commercial gain based upon use of a domain name that is likely to cause confusion with Complainant’s trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <secret-benefits.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 25, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page