Andersen Corporation v. Yang Zhi Chao
Claim Number: FA2207002004141
Complainant is Andersen Corporation (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Yang Zhi Chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com>, registered with eName Technology Co., Ltd..
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 July 13, 2022; the Forum received payment on July 13, 2022.
On July 13, 2022, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 July 14, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 3, 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@anderesenwindows.com, postmaster@andersendwindows.com, postmaster@andersensindows.com, postmaster@andersenwidnows.com, postmaster@andersenwindowns.com, postmaster@andsrsenwindows.com. Also on July 14, 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 August 10, 2022, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the Respondent is conversant and proficient in the English language. Therefore, after considering the circumstance of the present case including the fact that Respondent has failed to object to going forward in English, the Panel concludes that the instant proceeding should be conducted in English.
A. Complainant
Complainant contends as follows:
Complainant, Andersen Corporation, offers manufacturing and installation services related to window and door products.
Complainant has rights in the ANDERSEN mark through its registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names are identical or confusingly similar to Complainant’s ANDERSEN mark as they incorporate the mark in its entirety while adding the generic term “windows”, which is sometimes misspelled, as well as misspelling the mark in the <andsrsenwindows.com> domain name, and appending the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized Respondent to use its mark in the domain names. Respondent does not use the at-issue domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead diverts users to third-party goods through pay-per-click links that are offering competing goods.
Respondent registered and uses the <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names in bad faith. Respondent engages in a pattern of bad faith registration and use by registering multiple domain names. Additionally, Respondent disrupts Complainant’s business while attracting users for commercial gain and creating a likelihood of confusion. Furthermore, Respondent registered the at-issue domain names with actual knowledge of Complainant’s rights in the ANDERSEN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in ANDERSEN.
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 ANDERSEN trademark.
Respondent uses the at-issue domain names to address webpages that offer pay-per-click type hyperlinks.
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 shows that it has a USPTO registration for its ANDERSEN trademark. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names each incorporate Complainant‘s ANDERSEN trademark or a misspelled variant thereof followed by the term “windows” or a misspelled variant of “windows,” with all followed by the “.com” top-level domain name. The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, or <andsrsenwindows.com> from ANDERSEN for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names are each confusingly similar to Complainant’s ANDERSEN trademark. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also 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).
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, 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 the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Yang Zhi Chao” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, or <andsrsenwindows.com> for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names to address webpages displaying pay-per-click links to goods and/or services similar to those offered by Complainant under its ANDERSEN mark. Respondent’s use of the confusingly similar domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii) regarding any of the at-issue domain names. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also, Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each of the domain names.
First, Respondent has suffered numerous adverse UDRP decisions as a respondent. Respondent’s repeated cybersquatting evidences a pattern of domain name abuse and suggests Respondent’s bad faith in the instant case pursuant to 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).
Next, as mentioned above regarding rights and legitimate interests Respondent uses its confusingly similar <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names to address webpages displaying hyperlinks to goods and/or services similar to those provided by Complainant. Doing so shows Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶¶ 4(b)(iii) and (iv). See Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”).
Moreover, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or as seems to be the intent here will otherwise confuse a misspelled trademark laden domain name with its target trademark. Here, two of the at-issue domain names incorporate obviously misspelled versions of Complainant’s ANDERSEN trademark. Respondent’s typosquatting in itself is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also, Sports Auth. Mich., Inc. v. Skander, FA 135598 (Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).
Finally, Respondent registered <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> knowing that Complainant had trademark rights in the ANDERSEN mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s evident targeting of Complainant’s ANDERSEN trademark by registering multiple confusingly similar domain names. Respondent’s prior knowledge of Complainant's ANDERSEN trademark further indicates that Respondent registered and used the <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anderesenwindows.com>, <andersendwindows.com>, <andersensindows.com>, <andersenwidnows.com>, <andersenwindowns.com>, and <andsrsenwindows.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 11, 2022
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