J.R. Simplot Company v. shi lei / Huade Wang
Claim Number: FA2211002022148
Complainant is J.R. Simplot Company (“Complainant”), USA, represented by Steven M. Levy, District of Columbia. Respondent is shi lei / Huade Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwsimplot-benefits.com>, <simplot-benefit.com>, <simplot-benfits.com>, and <simplot-benifits.com>, registered with Sav.com, LLC; Dynadot, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on November 30, 2022; Forum received payment on November 30, 2022.
On November 30, 2022, Sav.com, LLC; Dynadot, LLC confirmed by e-mail to Forum that the <wwwsimplot-benefits.com>, <simplot-benefit.com>, <simplot-benfits.com>, and <simplot-benifits.com> domain names are registered with Sav.com, LLC; Dynadot, LLC and that Respondent is the current registrant of the names. Sav.com, LLC; Dynadot, LLC has verified that Respondent is bound by the Sav.com, LLC; Dynadot, 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 December 1, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@wwwsimplot-benefits.com, postmaster@simplot-benefit.com, postmaster@simplot-benfits.com, postmaster@simplot-benifits.com. Also on December 1, 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 December 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that because all the disputed domain names resolve to webpages with nearly identical content, were registered on the same date, and use a similar naming pattern, they are likely made by a single Respondent.
The Panel finds that all the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Respondents are collectively referred to as ‘Respondent.’
A. Complainant
i) Complainant, J.R. Simplot Company, offers marketable frozen French fries, corn, peas, and other vegetables. Complainant has rights in the SIMPLOT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 798,704, registered November 16, 1965) and other trademark agencies worldwide. The disputed domain names are confusingly similar to Complainant’s mark because they contain the SIMPLOT mark in its entirety, merely adding the term “benefits” or a misspelling thereof, and the generic top-level domain name (“gTLD”) “.com” to form the disputed domain names.
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s SIMPLOT mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain names to host pay-per-click links to competing sites.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent has shown a pattern of bad faith by registering multiple domains infringing on the trademarks of other brand owners. Additionally, Respondent targeted Complainant’s SIMPLOT mark for the purpose of obtaining commercial gain by hosting pay-per-click links. Respondent had actual knowledge of Complainant’s rights in the SIMPLOT mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain names were registered on March 10, 2022.
2. Complainant has established rights in the SIMPLOT mark based upon registration with the USPTO (e.g., Reg. No. 798,704, registered November 16, 1965)
3. The disputed domain names’ resolving websites host pay-per-click links to competing sites.
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 the domain names should be cancelled or transferred:
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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”).
Complainant asserts rights to the SIMPLOT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 798,704, registered November 16, 1965) and other trademark authorities globally. Registration of a mark with multiple international trademark authorities conveys rights in that mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Complainant has provided evidence of registration with the USPTO and other trademark authorities. Therefore, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain names <wwwsimplot-benefits.com>, <simplot-benefit.com>, <simplot-benfits.com>, and <simplot-benifits.com> are confusingly similar to Complainant’s mark because they contain the SIMPLOT mark in its entirety, merely adding the term “benefits” or a misspelling thereof. The addition of a generic term is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
Additionally, a subtle misspelling, omission of a space between words, or adding a generic top-level domain (“gTLD”) is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”).
The Panel notes that all the disputed domain names contain the SIMPLOT mark in its entirety, merely adding the term “benefit” or “benefits” and the hyphen. The Panel therefore finds that the disputed domain names are confusingly similar to the SIMPLOT mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not licensed or authorized to use Complainant’s SIMPLOT mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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 unmasked WHOIS information for the disputed domain names lists the registrant as “SHI LEI A/K/A HUADE WANG.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Additionally, Complainant asserts that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain names to display monetized links which divert Complainant’s customers and potential customers to other websites not associated with Complainant. Any attempt to divert traffic using a disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant has provided screenshots of the disputed domain names’ resolving webpages, showing the pay-per-click links in question and the sites they redirect to. Thus, the Panel finds Respondent does not use the disputed domain names for any bona fide offering of goods or services under Policy ¶ 4(c)(i) or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent registered and uses the disputed domain names in bad faith because Respondent has shown a pattern of bad faith by registering multiple domains infringing on the trademarks of other brand owners. Where the record reflects that the respondent has been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants establishes a pattern of bad faith registration and use of domain names and stands as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)); see also Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii)). To support this assertion, Complainant has provided screenshots of 35 prior UDRP cases that have been successfully brought against Respondent. The Panel further notes that Respondent registered four (4) disputed domain names incorporating Complainant’s mark in its entirety. Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent has sought to obtain commercial gain from its registration and use of the disputed domain names by hosting pay-per-click links to competing sites. Use of a disputed domain name to host links to competing sites supports a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant has provided screenshots of the disputed domain names’ resolving webpages, showing the aforementioned links. Thus, the Panel finds that Respondent registered and uses the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwsimplot-benefits.com>, <simplot-benefit.com>, <simplot-benfits.com>, and <simplot-benifits.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 29, 2022
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