RK HOLDINGS, LLP v. ying bao
Claim Number: FA2302002032319
Complainant is RK HOLDINGS, LLP (“Complainant”), represented by JungJin Lee of Trademark Lawyer Law Firm, PLLC, Michigan, USA. Respondent is ying bao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincolntters.com>, registered with Gname.com Pte. 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on February 16, 2023; Forum received payment on February 16, 2023.
On February 22, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <lincolntters.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. 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 February 28, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 20, 2023 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@lincolntters.com. Also on February 28, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2023, pursuant to Complainant's 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:
“Pursuant to verification received from the Registrar, the Registration agreement is in Chinese. You have two options: 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English.”
Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. The Complaint states that “[t]he disputed website is completely and exclusively in English and contains terms and language unique to the website and all in English.” It is not entirely clear what that means, but the resolving website is in English and the Panel is in agreement with the submission – later in the Complaint – that the resolving website resembles Complainant’s official website and uses Complainant’s LINCOLN OUTFITTERS and RURAL KING trademarks.
The evidence suggests that Respondent has mimicked, rather than lifted pages from, Complainant’s website and so the Panel finds that Respondent has proficiency in the English language and determines, pursuant to Rule 11(a), that the proceedings should be conducted in English.
A. Complainant
Complainant asserts trademark rights in LINCOLN OUTFITTERS and RURAL KING and holds national registrations for those trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant operates a chain of stores across United States under the name, RURAL KING, providing farming goods, feed, and products;
2. Complainant uses the brand LINCOLN OUTFITTERS principally for clothing goods sold in those stores;
3. Complainant is the owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 5,863,569, registered on September 17, 2019 for LINCOLN OUTFITTERS;
4. the disputed domain name was registered on October 15, 2022 and resolves to a website described above that displays Complainant’s trademarks and items typically sold by Complainant; and
5. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”).
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 (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant has registered both trademarks, LINCOLN OUTFITTERS and RURAL KING, with the USPTO, a national trademark authority, and so has rights in those marks, albeit that it is only the trademark, LINCOLN OUTFITTERS, which is relevant to this decision.
Although the RURAL KING mark appears on the website resolving from the disputed domain name, that fact has no impact on the assessment of paragraph 4(a)(i) of the Policy (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 1.15 which asks: Is the content of the website associated with a domain name relevant in determining identity or confusing similarity? In answer, it is stated that “[t]he content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.” Although such content might inform questions of a respondent’s intentions, it is not relevant to the strict assessment of confusing similarity between trademark and domain name).
Complainant makes no submissions regarding the confusing similarity between the (relevant) trademark, LINCOLN OUTFITTERS, and the domain name and so the Panel is left to make that assessment for itself.
The gTLD, “.com”, can be disregarded for the purposes of that comparison (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The comparison thus resolves to the trademark and the term lincolntters.
The WIPO Jurisprudential Overview 3.0 at ¶ 1.7 asks: What is the test for identity or confusing similarity under the first element? In answer, it is said that the test “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
A more holistic approach is sometimes taken where the domain name clearly suggests the trademark, such as in those cases described as typosquatting where, one more, the WIPO Jurisprudential Overview 3.0 is instructive, stating at ¶ 1.9 that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. … This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.”
With that guidance, the Panel observes that the great majority of English words containing a double “t” position a vowel before the double consonant. Accordingly, the name, “Lincoln”, may be recognised apart from the letter string, “tters”. However, the Panel finds that it is highly unlikely that those letters would be perceived as part of the word, “fitter(s)”, less still the word, “outfitter(s)”. To reason that perception of “Lincoln” would trigger an understanding that “tters” was a truncation of “outfitters” would be to assume prior knowledge of the trademark and it is settled that the reputation of a trademark should be disregarded in making the assessment of confusing similarity. Otherwise, the compared terms are quite different, and the Panel finds that lincolntters may only be seen by many as a meaningless collocation of letters.
The Panel finds that the disputed domain name is not confusing similar to the trademark and accordingly finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <lincolntters.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 4, 2023
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