Skillshare, Inc. v. 蒋黎
Claim Number: FA2204001992643
Complainant is Skillshare, Inc. (“Complainant”), represented by Carissa L. Weiss of Law Office of Carissa L. Weiss, PLLC, New York, USA. Respondent is 蒋黎 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skilllshare.com>, registered with DNSPod, Inc..
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2022; the Forum received payment on April 18, 2022. The Complaint was received in both Chinese and English.
On April 21, 2022, DNSPod, Inc. confirmed by e-mail to the Forum that the <skilllshare.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 26, 2022, the Forum served the Chinese language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 16, 2022 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@skilllshare.com. Also on April 26, 2022, the Chinese and English 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 May 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement for the disputed domain name is written in the Chinese language, thereby making the language of the proceedings to be Chinese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and in the absence of a Response, determines that the remainder of this proceeding may be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, Skillshare, Inc., uses its SKILLSHARE mark in relation to educational services in a wide variety of disciplines. Complainant maintains registration of the SKILLSHARE mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) as well as with other authorities including the World Intellectual Property Organization (WIPO). See Compl. Ex. B and C. Complainant also submits that it has common law trademark rights in the SKILLSHARE and has had those rights since 2010.The <skilllshare.com> domain name is identical or confusingly similar to Complainant’s SKILLSHARE mark because it incorporates Complainant’s SKILLSHARE mark while adding an extra letter “L” and the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <skilllshare.com> domain name because Respondent is not commonly known by the domain name. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent’s domain name redirected users to Complainant’s own website. Further, Respondent’s website redirects users to a website that features hyperlinks that either direct users to Complainant’s own website or to related websites of third parties.
Respondent registered and uses the <skilllshare.com> domain name in bad faith because Respondent engages in typosquatting by adding an extra letter to the SKILLSHARE mark. The domain name creates confusion over Complainant’s affiliation with Respondent which is done for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of educational services.
2. Complainant has established its rights in the SKILLSHARE mark through its registration of the mark with the United States Patent and Trademark Office (USPTO)(International Registration Number 1652254, registered on June 25, 2021) as well as with other authorities including the World Intellectual Property Organization (WIPO)( Registered Number 1652254, registered on December 21, 2021).
3. Complainant has also established that it has common law trademark rights in the SKILLSHARE mark and that it has had those rights since 2010.
4. Respondent registered the <skilllshare.com> domain name on November 23, 2018.
5. Respondent has caused the disputed domain name to redirect users to a website that features hyperlinks that either direct users to Complainant’s own website or to related websites of third parties.
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 argues that it has rights in the SKILLSHARE mark through its registration of the mark with the USPTO and with WIPO. Registration of a mark with multiple authorities is sufficient to establish rights under Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Complainant provides copies of its registration with USPTO (e.g. Reg. No. 1,652,254 – Registered on June 25, 2021) and with WIPO (e.g. Reg. No. 1 652 254 – Registered on December 21, 2021). See Compl. Ex. B and C.
Complainant has also established that it has common law trademark rights in the SKILLSHARE mark and that it has had those rights since 2010.
Therefore, the Panel finds that Complainant has rights in the SKILLSHARE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SKILLSHARE mark. Complainant argues that the <skilllshare.com> domain name is identical or confusingly similar to Complainant’s SKILLSHARE mark because it incorporates Complainant’s mark while adding in an extra letter “L” and the “.com” gTLD to form a domain name. A domain name may be found to be confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a letter and a gTLD. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Therefore, the Panel finds that the <skilllshare.com> domain name is confusingly similar to Complainant’s SKILLSHARE mark under 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 SKILLSHARE mark and to use it in its domain name adding only an extra letter “L” to the mark;
(b) Respondent registered the domain name on November 23, 2018;
(c) Respondent has caused the disputed domain name to redirect users to a website that features hyperlinks that either direct users to Complainant’s own website or to related websites of third parties;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have any rights or legitimate interests in the <skilllshare.com> domain name because Respondent is not commonly known by the domain name. Where a respondent does not provide evidence to the contrary, identifying WHOIS information may be used to show that a respondent is not commonly known by a 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.”). WHOIS information lists the registrant as “蒋黎”. See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name <skilllshare.com> domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent is not using the <skilllshare.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name to redirect users to Complainant’s own website or host hyperlinks directing users to third-party services. Use of a domain name to redirect users to a complainant’s website or to host hyperlinks to third-party websites may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website which displays links to third-party services as well as previously redirecting users to Complainant’s own website. See Compl. Ex. F and G. Therefore, the Panel finds that Respondent is not using the <skilllshare.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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 does not have a right or legitimate interest 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 argues Respondent registered and uses the <skilllshare.com> domain name in bad faith because Respondent creates confusion for commercial gain by redirecting users to other websites. Use of a domain name that creates confusion amongst users as to an affiliation with a complainant may be evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant bases its argument on Respondent’s website redirecting users to third-party websites while using Complainant’s well-known mark. Therefore, the Panel finds that Respondent registered and uses the <skilllshare.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent registered and uses the <skilllshare.com> domain name in bad faith because Respondent typosquats on Complainant’s mark. Typosquatting is indicative of bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant submits that Respondent is engaged in typosquatting due to Respondent’s addition of an extra letter “L” to Complainant’s SKILLSHARE mark. Therefore, the Panel finds that Respondent registered and uses the <skilllshare.com> domain name in bad faith under Policy ¶ 4(a)(iii).
It should also be noted that although the disputed domain name was registered prior to the registration of Complainant’s registered trademarks, Complainant has established that it has common law trademark rights in the SKILLSHARE mark and that it has had those rights since 2010, prior to the registration of the disputed domain name.
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 <skilllshare.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: May 24, 2022
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