ReisUP, Inc. v. Shanshan Huang / This domain name is for sale
Claim Number: FA2104001941723
Complainant is ReisUP, Inc. (“Complainant”), represented by Rajesh Fotedar of Cognition IP P.C., California, USA. Respondent is Shanshan Huang / This domain name is for sale (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reisup.com>, registered with Namesilo, Llc; NameSilo, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2021; the Forum received payment on April 15, 2021.
On April 16, 2021, Namesilo, Llc; NameSilo, LLC confirmed by e-mail to the Forum that the <reisup.com> domain name is registered with Namesilo, Llc; NameSilo, LLC and that Respondent is the current registrant of the names. Namesilo, Llc; NameSilo, LLC has verified that Respondent is bound by the Namesilo, Llc; NameSilo, 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 April 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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@reisup.com. Also on April 20, 2021, 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 May 17, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant has rights in the REISUP mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,714,394, registered April 2, 2019). See Amend. Compl. Exhibit 1A. Respondent’s <reisup.com> domain name is identical to Complainant’s REISUP mark as it incorporates the REISUP mark verbatim, merely adding the generic top level domain (gTLD) “.com.”
Respondent lacks rights or legitimate interests in the <reisup.com> domain name. Respondent is not commonly known by the domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it in connection with pay-per-click hyperlinks. Additionally, Additionally, Respondent further lacks rights or legitimate interests in the disputed domain name as Respondent offers the disputed domain name for sale.
Respondent registered and uses the <reisup.com> domain name in bad faith. Respondent has a history of bad faith registrations. Respondent also offers the disputed domain name for sale. Finally, Respondent engaged in opportunistic bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company incorporated pursuant to the laws of the State of Delaware.
2. Complainant has established its trademark rights in the REISUP mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,714,394, registered April 2, 2019).
3. Complainant has also demonstrated its common law trademark rights in the REISUP mark, since at least October 19, 2015
4. Respondent registered the <reisup.com> domain name on October 20, 2015.
5. Respondent uses the domain name in connection with pay-per-click hyperlinks and to offer it for sale.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the REISUP mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 5,714,394, registered April 2, 2019). See Amend. Compl. Exhibit 1A. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Complainant has demonstrated rights in the REISUP mark per Policy ¶ 4(a)(i).
Although Complainant makes no arguments regarding common law trademark rights, the Panel concludes from the totality of the evidence that Complainant has also acquired secondary meaning in the REISUP mark within Complainant’s mark. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”). When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Additionally, secondary meaning can be evidenced by longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant provides a screenshot showing Complainant applied for a Certificate of Formation from the State of Delaware for REISUP LLC on October 19, 2015. See Amend. Compl. Exhibit 1C. Therefore, the Panel finds Complainant has demonstrated rights in the REISUP mark, since at least October 19, 2015, per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s REISUP mark Complainant argues Respondent’s <reisup.com> domain name is identical to Complainant’s REISUP mark as it incorporates the REISUP mark verbatim, merely adding the generic top level domain (gTLD) “.com.” Adding a gTLD to a mark fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel finds the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
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 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”).
(a) Respondent has chosen to take Complainant’s REISUP trademark and to use it in its domain name verbatim;
(b) Respondent registered the <reisup.com> domain name on October 20, 2015;
(c) Respondent uses the domain name in connection with pay-per-click hyperlinks and to offer it for sale.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <reisup.com> domain name as Respondent is not commonly known by the domain name. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS information for the disputed domain name lists the registrant as “Shanshan Huang / This domain name is for sale,” and Complainant argues there is no other evidence to suggest that Respondent is known by the disputed domain name. See Amend. Compl. Exhibit 4B. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <reisup.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it in connection with pay-per-click hyperlinks. Using a disputed domain name connection with pay-per-click hyperlinks 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 Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provides screenshots showing the disputed domain name resolves to a website that feature links to websites offering various unrelated products and services including, but not limited to, wireless networks, credit cards and comcast See Amend. Compl. Exhibits 2A-2J. 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);
(g) Complainant argues that Respondent further lacks rights or legitimate interests in the <reisup.com> domain name as Respondent offers the disputed domain name for sale. Offering a disputed domain name for sale is further evidence that a respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Here, Complainant provides screenshots showing the disputed domain name is offered for sale. See Amend. Compl. Exhibit 3. Therefore, the Panel finds Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
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 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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <reisup.com> domain name in bad faith as Respondent offers the disputed domain name for sale. Offering a disputed domain name for sale can demonstrate bad faith per Policy ¶ 4(b)(i) if a respondent intended to make such an offer when registering the disputed domain. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Here, the Panel recalls Complainant provides a screenshot showing that the disputed domain name is offered for sale. See Amend. Compl. Exhibit 3. Complainant argues Respondent began offering the disputed domain name for sale immediately after registering it. See id. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant contends Respondent registered and uses the <reisup.com> domain name in bad faith as Respondent has a history of bad faith registrations. A respondent’s prior adverse UDRP cases can demonstrate bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, Complainant argues that Respondent has displayed a similar pattern of conduct as reflected in other various disputes before the Forum, pointing to case numbers: 1620342, 1772893, and 1879256. As the Panel agrees, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Thirdly, Complainant contends Respondent registered and uses the <reisup.com> domain name in bad faith as Respondent engaged in opportunistic bad faith registration. Registering a disputed domain name with opportunistic bad faith can demonstrate bad faith per Policy ¶ 4(a)(iii). See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (“The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”). Here, Complainant provides screenshots showing that Respondent registered the disputed domain name one day after Complainant filed for a certificate of formation. See Amend. Compl. Exhibits 1C and 4A. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the REISUP mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <reisup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 18, 2021
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