Parchment LLC v. li ai sheng
Claim Number: FA2105001945708
Complainant is Parchment LLC (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is li ai sheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <parchment.cc> and <parchment.host>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2021; the Forum received payment on May 20, 2021. The Complaint was received in English.
On May 24, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <parchment.cc>and <parchment.host> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 May 26, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 15, 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@parchment.cc, postmaster@parchment.host. Also on May 26, 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 June 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. Notably, the at-issue domain names consists of English letters, not Chinese characters, Complainant’s PARCHMENT mark is in English, and the domain names are used in connection with emails and fraudulent materials regarding transcripts which are in English. After considering the circumstance of the present case and in light of the fact that Respondent has not responded to the substance of the Complaint, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant is an online credentialing service.
Complainant has rights in the PARCHMENT mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <parchment.cc> and <parchment.host> domain names are identical to Complainant’s mark as they incorporate the mark in its entirety and add the “.cc” country code top-leve domain (“ccTLD”) and the “.host” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <parchment.cc> and <parchment.host> domain names. Respondent is not commonly known by the at-issue domain names, and does not use them for any bona fide offering of goods or services, nor a legitiamte noncommercial or fair use, but instead attempts to pass off as Complainant using email from the at-issue domain names.
Respondent registered and uses the <parchment.cc> and <parchment.host> domain names in bad faith. Respondent attracts internet users for commercial gain by passing off as Complainant via email hosted at the at-issue domain names. Respondent registered the domain names with actual knowledge of Complainant’s rights in the PARCHMENT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PARCHMENT mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the PARCHMENT trademark.
Respondent uses the at-issue domain names to pose as Complainant in furtherance of fraud.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the PARCHMENT mark with the USPTO demonstrates Complainant’s rights in a mark under 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)).
Respondent’s <parchment.cc> and <parchment.host> domain names consists of Complainant’s PARCHMENT trademark followed by the top-level “.cc” or “.host”. Under the Policy the slight differences between Respondent’s domain names and Complainant’s trademark do nothing to distinguish the domain names from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <parchment.cc> and <parchment.host> domain names are each confusingly similar to Complainant’s PARCHMENT trademark. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue domain name.
The WHOIS information for <parchment.cc> and <parchment.host> shows that “li ai sheng” is the domain names’ registrant and there is nothing in the record before the Panel that indicates that Respondent is known by either <parchment.cc> or <parchment.host>, or by Complainant’s PARCHMENT trademark. Given the foregoing, the Panel finds that Respondent is not commonly known by either at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <parchment.cc> and <parchment.host> at-issue domains name to pass itself off as Complainant in connection with an email phishing scheme. Respondent uses email hosted at one confusingly similar at-issue domain name and an associated website addressed by the other at-issue domain name in support of a ruse that makes it appear to the email’s recipient that certain documents, i.e. transcripts, are coming from Complainant when they are not. Such use of Respondent’s confusingly similar domain names is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s <parchment.cc> and <parchment.host> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith regarding each domain name pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above with regard to rights and legitimate interest, Respondent uses the <parchment.cc> and <parchment.host> domain names to facilitate a phishing scheme using email and an associated website to pass itself as Complainant in furtherance of defrauding third parties. Respondent’s use of the domain names for such purpose shows Respondent’s bad faith under Policy ¶ 4 (a)(iii). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Finally, Respondent registered the <parchment.cc> and <parchment.host> domain names knowing that Complainant had trademark rights in PARCHMENT. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s registration of multiple domain names containing Complainant’s mark, and from Respondent’s use of <parchment.cc> and <parchment.host> to perpetrate fraud. Therefore, the Panel finds that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <parchment.cc> and <parchment.host> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(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 <parchment.cc> and <parchment.host> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 18, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page