Sysco Corporation v. zhimi zhu / Zhu Zhi Min
Claim Number: FA2210002017775
Complainant is Sysco Corporation (“Complainant”), represented by Nathan C Belzer of Belzer PC, United States of America. Respondent is zhimi zhu / Zhu Zhi Min (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnsysco.com>, registered with 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on October 27, 2022; Forum received payment on October 27, 2022.
On October 28, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <cnsysco.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the 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 October 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@cnsysco.com. Also on October 28, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2022, pursuant to the complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a compliant Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The domain name registration agreement is written in Chinese making Chinese the language of these proceedings unless the Panel determines otherwise. Complainant submits that Respondent is proficient in English and that claim is borne out by the evidence which shows a fully developed website written in English. Any doubt in that regard is put to rest by the discussion which follows.
Accordingly, pursuant to Rule 11(a), the Panel finds sufficient evidence of Respondent’s capacity in the English language and decides that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in SYSCO and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. A non-compliant, informal response is discussed later.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses its trademark, SYSCO, in the foodservice industry;
2. The trademark is the subject of United States Patent & Trademark Office (“USPTO”) Reg. No. 969,024, registered September 25, 1973;
3. the disputed domain name was created on April 3, 2018 and resolves to a website which mimics Complainant’s official website and uses both the trademark and a logo-style iteration thereof; and
4. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its 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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant therefore has rights in SYSCO since it provides proof of its registration of that trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the domain name with the trademark, the gTLD “.com” can be disregarded. Thereafter, the domain name merely prefixes the common country abbreviation for China, “CN”, to the trademark. Those additions are of no distinctive value; the trademark remains the recognizable part of the domain name and the additions only increases the likelihood of confusion. The Panel finds the name to be confusingly similar to the trademark[ii].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iii].
The name of the underlying domain name holder, as disclosed by the Registrar, is “zhimi zhu / Zhu Zhi Min” which does not provide any indication that Respondent might be commonly known by the domain name.
Complainant states that there is no association between the parties and Respondent has no authority to use the trademark. Complainant provides screenshots of the resolving website which slavishly copies the look and feel of Complainant’s website. The site borrows slabs of text from the genuine site but then mutates the material to show the sale of engine oils and lubricants, goods having no connection with Complainant’s business.
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or a legitimate interest in the domain name. However, as stated earlier, Respondent submitted an informal, non-compliance email written in Chinese. The Panel is under no obligation to consider that email but has obtained an uncertified transliteration of that message. It states (i) that Respondent has a Chinese trademark registration certificate (not provided), and (ii) that “after compensating our registration fees and related losses, we can consider passing the domain name over.”
The Panel finds that even if a Chinese trademark registration for the mark exists, the use of the domain name is deliberately misleading and dishonest[iv]. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that website by implying to internet users that they will reach a local site either operated by Complainant or someone affiliated with Complainant[v].
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cnsysco.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 23, 2022
[i] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[ii] See, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”;
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.")).
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
[v] See, for example, H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) determining that selling counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv); Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”
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