Sand Cloud Holdings LLC v. He ZhenBei
Claim Number: FA2109001962930
Complainant is Sand Cloud Holdings LLC (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is He ZhenBei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sand-cloud.com>, (‘the Domain Name’) registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2021; the Forum received payment on September 9, 2021.
On September 10, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sand-cloud.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 September 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@sand-cloud.com. Also on September 13, 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 October 5, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant owns the trade mark SAND CLOUD registered, inter alia, in the USA for textile goods with first use recorded as 2014.
The Domain Name registered in 2021 is confusingly similar to the Complainant’s trade mark containing it in its entirety and merely adding a hyphen and the gTLD “.com” which do not distinguish the Domain Name from the Complainant’s mark.
Respondent is not commonly known by the Domain Name and is not authorized by the Complainant. The web site connected with the Domain Name is using the Complainant’s trade mark as a masthead to purport to offer products using material copied from the Complainant’s web site including claims to support the charities the Complainant supports. The use of material from the Complainant’s web site shows the Respondent is aware of the Complainant and its rights and business. Since Internet users are being duped into believing the site attached to the Domain Name is official this is not legitimate. It is registration and use in bad faith causing confusion on the Internet for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark SAND CLOUD registered, inter alia, in the USA for textile goods with first use recorded as 2014.
The Domain Name registered in 2021 has been used for a site purporting to offer products with material copied from the Complainant’s site using the Complainant’s mark as a masthead to present the site attached to the Domain Name as an official site of the Complainant. Customers have actually been confused.
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 Domain Name consists of the Complainant's SAND CLOUD mark (which is registered, inter alia, in USA for textile goods with first use recorded as 2014), a hyphen and the gTLD “.com”.
Previous panels have held that the addition of a hyphen does not prevent confusing similarity between a complainant’s mark and a domain name. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).). Accordingly the Panel holds that the addition of a hyphen to the Complainant’s trade mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The gTLD “.com” does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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). The use of the Domain Name is commercial so it cannot be legitimate noncommercial fair use.
The web site attached to the Domain Name uses the Complainant's SAND CLOUD mark as a masthead to offer goods using material copied from the Complainant’s web site including claims to patronize the same charities. It does not make it clear that there is no commercial connection with the Complainant and the web site appears to be an official site of the Complainant. The Panel finds this use is confusing and the Complainant has adduced actual evidence of customer confusion. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site have reasonably believed it is connected to or approved by the Complainant as it offers products under the Complainant’s trade mark as a masthead using material copied from the Complainant’s web site and purporting to patronize the same charities as the Complainant giving the impression that the site attached to the Domain Name is an official site of the Complainant. The use of material from the Complainant’s web site shows that the Respondent is aware of the Complainant its rights, business and products.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and the products on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4 (b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sand-cloud.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 5, 2021
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