Bolton & Menk, Inc. v. chaiming ming
Claim Number: FA2109001963601
Complainant is Bolton & Menk, Inc. ("Complainant"), represented by Rhett P. Schwichtenberg of Gislason & Hunter LLP, Minnesota, USA. Respondent is chaiming ming ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boltonmenk.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2021; the Forum received payment on September 14, 2021.
On September 16, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by email to the Forum that the <boltonmenk.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on September 17, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant has offered services related to engineering and surveying under the name BOLTON & MENK since 1949. Complainant has applied to register BOLTON & MENK as a trademark in standard character form. The application was filed with the United States Trademark and Copyright Office on May 13, 2021. Complainant owns the domain name <bolton-menk.com> and has used that domain name to offer its services since 1996. Complainant asserts that the BOLTON & MENK mark has become well recognized by consumers as a result of its extensive use and promotion over many years.
Respondent registered the disputed domain name <boltonmenk.com> in March 2021. The domain name is being used for a Chinese-language website composed of explicit videos and advertisements. Complainant alleges that Respondent maliciously registered the disputed domain name and linked it to pornographic content, in order to induce Complainant to purchase the domain name to protect its business and reputation. Complainant further alleges that Respondent has a history of registering domain names corresponding to trademarks, pointing out that the <boltonmenk.com> website appears to be the same as one hosted at another domain name. Complainant states that Respondent is not commonly known by the disputed domain name and is not a licensee of Complainant nor otherwise authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <boltonmenk.com> is identical to its BOLTON & MENK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has not proved that it has rights in a relevant trademark.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant contends that the disputed domain name <boltonmenk.com> is identical to its BOLTON & MENK mark.
Complainant does not own a trademark registration; its application to register BOLTON & MARK is pending before the United States Patent & Trademark Office, and has not yet been published for opposition. A trademark registration is not necessary to establish rights under Paragraph 4(a)(i), however, provided the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See, e.g., Brime, LLC v. Jack Zhang, FA 1945815 (Forum July 6, 2021).
A complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy.
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
. . . .
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3.
Use merely as a trade name is insufficient, absent evidence that the name also functions as a trademark. See, e.g., Alliant Energy Corp. v. Billy Wood, FA 1959495 (Forum Sept. 13, 2021) (finding vague assertions regarding public recognition and use of trade name insufficient to demonstrate common law trademark rights); Navigo Energy Inc. v. Andreas Meier & toptarget.com BV, FA 206312 (Forum Dec. 6, 2003) (finding use as corporate name insufficient, absent evidence that it functioned as a trademark or service mark and thereby acquired secondary meaning); Netro Corp. v. James Koustas, FA 109723 (Forum June 12, 2002) (finding conclusory affidavits and registration of company name with state authority insufficient to show common law trademark rights).
Complainant states that it has used BOLTON & MARK for more than 70 years. The supporting evidence submitted by Complainant consists of two exhibits: (1) its application to register the mark, including a redacted copy of a letter from Complainant to a potential client that includes a logo incorporating BOLTON & MENK, a reference to Complainant's <bolton-menk.com> domain name, and several instances of "Bolton & Menk" or "Bolton & Menk, Inc." as a trade name within the text of the letter; and (2) a copy of Complainant's <bolton-menk.com> website, which includes the same logo and various instances of "Bolton & Menk" or "Bolton & Menk, Inc." as a trade name.
It is unclear whether BOLTON & MENK functions as a trademark rather than merely a trade name, and the Panel has not been provided with evidence of any uses of BOLTON & MENK other than within Complainant's own letterhead and website. Furthermore, Complainant has offered only vague, conclusory allegations regarding public recognition of the putative mark. It has presented no evidence (nor even any specific allegations) regarding sales volumes, advertising expenditures, number of customers or website views, or other information that might support a finding of secondary meaning. The Panel thus considers Complainant's submissions insufficient to demonstrate common law trademark rights for purposes of the Policy.
As the Panel's conclusion on the first element is dispositive of the present dispute, the Panel declines to address the other elements set forth in Paragraph 4(a) of the Policy. See, e.g., Brime, LLC v. Jack Zhang, supra (declining to address rights or legitimate interests and bad faith in similar circumstances).
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <boltonmenk.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: October 18, 2021
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