Mueller Supply Company, Inc. d/b/a Mueller, Inc. v. Zhichao Yang
Claim Number: FA2103001937123
Complainant is Mueller Supply Company, Inc. d/b/a Mueller, Inc. (“Complainant”), represented by Jason R. Fulmer of Foley & Lardner LLP, Texas, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <muelerinc.com> and <muelleinc.com>, registered with 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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2021; the Forum received payment on March 18, 2021.
On March 18, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <muelerinc.com> and <muelleinc.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. 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 March 24, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 13, 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@muelerinc.com, postmaster@muelleinc.com. Also on March 24, 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 April 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
(i) the domain names at Issue are expressed in English,
(ii) the websites resolving from the domain names include English
characters,
(iii) the domain names’ registration records likewise include English
characters, and
(iv) these facts demonstrate Respondent’s proficiency in English.
Respondent does not contest any of these assertions. Therefore, having in mind that translating the documents required to prosecute this proceeding in Chinese would put Complainant to a substantial financial burden and might unnecessarily delay this proceeding, and that UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant makes and markets steel buildings and residential metal roofing.
Complainant holds a registration for the MUELLER, INC. mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,882,320, registered October 15, 2019.
Respondent registered each of the domain names <muelerinc.com> and <muelleinc.com> on May 25, 2020.
Each of the domain names is confusingly similar to Complainant’s MUELLER, INC. mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not authorized Respondent to use Complainant’s MUELLER, INC. mark.
Respondent has not used the domain names in connection with a bona fide offering of goods or services.
Instead, Respondent uses the domain names to resolve to websites hosting hyperlinks to the websites of commercial enterprises doing business in competition with that of Complainant.
Respondent likely profits from the operation of those links by receipt of click-through fees for each instance in which an Internet user accesses any of them.
Respondent lacks both rights to and legitimate interests in the domain names.
Respondent knew of Complainant’s rights in the MUELLER, INC. mark prior to registering the domain names.
The domain names are instances of typo-squatting.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the MUELLER, INC. trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <muelerinc.com> and <muelleinc.com> domain names are confusingly similar to Complainant’s MUELLER, INC. mark.
Each of the domain names incorporates the dominant portion of the mark, with only the deletion of the space between its terms as well as a comma in both instances and a single letter (“l” in one case, “r” in the other), with the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum November 15, 2006) (finding that a respondent’s <hacrs.com> domain name was confusingly similar to a UDRP complainant’s HACRES mark where it omitted the letter “e” from the mark and added the gTLD “.com”).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
As to Respondent’s deletion of the space between the terms of, as well as the comma included in, Complainant’s mark, in creating the domain names, see, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the either of the domain names <muelerinc.com> and <muelleinc.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <muelerinc.com> and <muelleinc.com> domain names, and that Complainant has not authorized Respondent to use the MUELLER, INC. mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Zhichao Yang,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses both of the domain names to resolve to websites hosting links to the websites of commercial enterprises doing business in competition with that of Complainant, and that Respondent likely profits from the operation of those links in the form of receipt of click-through fees for each instance in which an Internet user accesses any of them. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <muelerinc.com> and <muelleinc.com> domain names, which we have found to be confusingly similar to Complainant’s MUELLER, INC. trademark and service mark, is an effort to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding, under Policy ¶ 4(b)(iv), bad faith registration and use of disputed domain names where a respondent used the domain names to divert to its own website Internet users searching for the official website of a UDRP complainant, likely profiting in the process).
We are also convinced by the evidence before us that Respondent knew of Complainant, and of its rights in the MUELLER, INC. mark, when Respondent registered the <muelerinc.com> and <muelleinc.com> domain names. This further demonstrates Respondent’s bad faith in registering them. See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018):
The Panel here finds that Respondent did have actual knowledge of Complainant’s mark [when it registered a confusingly similar domain name, thus] demonstrating bad faith registration … [of the domain name] … under Policy ¶ 4(a)(iii).
And, in light of Respondent’s undenied use of the domain names to profit from the diversion of Internet users to the websites of Complainant’s commercial competitors, see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The … Panel here finds actual knowledge [on the part of a respondent of a UDRP complainant’s rights in a mark when that respondent registered a confusingly similar domain name, and thus that respondent’s bad faith in registering it] through the name used for the domain and the use made of it.
Finally, under this head of the Policy, it is evident from the record that each of the challenged domain names is an instance of typo-squatting, i.e.: the creation of a domain name that is a deliberate misspelling of the mark of another in order to take advantage of the keyboarding errors commonly made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting is independent proof of Respondent’s bad faith in the registration and use of the domain names. See, for example, Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum September 7, 2018):
Typo[-]squatting itself is evidence of relevant bad faith registration and use [of a domain name].
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <muelerinc.com> and <muelleinc.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 20, 2021
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