Duke University v. Jian Fei Guo
Claim Number: FA2303002037319
Complainant is Duke University (“Complainant”), represented by Susan Freya Olive of Olive & Olive, P.A., North Carolina, USA. Respondent is Jian Fei Guo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dukecollege.store>, <bluedevils.store>, <dukebluedevils.store>, <dukebluedevilsbasketball.store>, <dukebasketball.store>, <bluedevilsbasketball.store>, <ncaaduke.store>, <ncaadukebluedevils.store>, <ncaabluedevils.store>, registered with Chengdu West Dimension Digital 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on March 24, 2023; Forum received payment on March 24, 2023.
On March 27, 2023, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <dukecollege.store>, <bluedevils.store>, <dukebluedevils.store>, <dukebluedevilsbasketball.store>, <dukebasketball.store>, <bluedevilsbasketball.store>, <ncaaduke.store>, <ncaadukebluedevils.store>, <ncaabluedevils.store> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital 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 March 30, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of April 19, 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@dukecollege.store, postmaster@bluedevils.store, postmaster@dukebluedevils.store, postmaster@dukebluedevilsbasketball.store, postmaster@dukebasketball.store, postmaster@bluedevilsbasketball.store, postmaster@ncaaduke.store, postmaster@ncaadukebluedevils.store, postmaster@ncaabluedevils.store. Also on March 30, 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 April 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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: LANGUAGE OF PROCEEDING
The Panel notes that pursuant to UDRP Rule 11(a), the language of this administrative proceeding is presumed to be Chinese, as that Rule provides that the language of the proceeding shall be the language of the registration agreement unless the Panel finds in all the circumstances that another language is more appropriate. Complainant submits that the proceeding should be conducted in English as English is in all the circumstances a more appropriate language.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the proceeding should advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of that language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant notes the disputed domain names and content on the resolving sites are all in English. See Compl. Annex V, Exhibit 1.V. In addition, the contact information on the resolving sites is a United States location, as is the IP location listed on the WHOIS information. See Compl. Annex II. Finally, Respondent targets a United States-based university and purports to offer its goods for sale in American dollars. See Compl. Annex V, Exhibit 1.V.
The Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language and therefore decides in all the circumstances that the proceeding should be conducted in English.
In the instant proceeding, Complainant has submitted 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 for Uniform Domain Name Dispute Resolution Policy (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 each of the domain names is registered by the same domain name holder, as in each case:
- The registrar and name servers are identical.
- The websites hosted at the disputed domain names are substantially similar.
- The contact information provided on each disputed domain name’s resolving webpage is identical.
Accordingly, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore go forward on that basis.
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant, Duke University, is an American university. Complainant has rights in the DUKE marks through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,702,350, registered July 21, 1992; Reg. No. 2,317,603, registered February 15, 2000) and other international trademark authorities. See Compl. Annex III. Complainant also has rights in the BLUE DEVILS mark through trademark registrations (e.g., Reg. No. 5,440,857, registered April 10, 2018). See id.
Respondent’s domain names are confusingly similar to Complainant’s mark, using the entirety of the DUKE and/or BLUE DEVILS marks with a generic term related to Complainant and a generic top-level domain (“gTLD”). Further, Respondent uses Complainant’s logos and imagery on the resolving site.
Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not licensed or authorized to use Complainant’s DUKE and BLUE DEVILS marks 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. Rather, Respondent offers unauthorized and counterfeit DUKE-branded goods for sale.
Respondent registered and uses the disputed domain names in bad faith by competing with Complainant and selling counterfeit goods. In addition, Respondent is passing off as and falsely affiliating themselves with Complainant. Respondent also failed to comply with a demand letter from Complainant. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DUKE and BLUE DEVILS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States university.
2. Complainant has established it trademark rights in the DUKE marks through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,702,350, registered July 21, 1992; Reg. No. 2,317,603, registered February 15, 2000) and other international trademark authorities and also in the BLUE DEVILS mark through trademark registrations (e.g., Reg. No. 5,440,857, registered April 10, 2018).
3. Respondent registered the disputed domain names on the following dates:
<dukecollege.store>: November 30, 2022;<bluedevils.store>: February 10, 2023;<dukebluedevils.store>:December26,2021; <dukebluedevilsbasketball.store>: February 10, 2023;<dukebasketball.store>: February 10, 2023;<bluedevilsbasketball.store>: February 10, 2023;<ncaaduke.store>: December 8, 2022;<ncaadukebluedevils.store>: July 7, 2022; and <ncaabluedevils.store>: September 17, 2022.
4. Respondent has caused the disputed domain names to be used to offer unauthorized and counterfeit DUKE-branded goods for sale.
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 submits that it has rights in the DUKE and BLUE DEVILS marks through multiple trademark registrations, including with the USPTO (e.g., Reg. No. 1,702,350, registered July 21, 1992; Reg. No. 2,317,603, registered February 15, 2000; Reg. No. 5,440,857, registered April 10, 2018). See Compl. Annex III. Registration of a mark with the multiple trademark agencies is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the DUKE and BLUE DEVILS marks with the USPTO and other trademark authorities, the Panel finds that Complainant has demonstrated rights in the DUKE and BLUE DEVILS marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DUKE and BLUE DEVILS marks. Complainant argues that the disputed domain names are confusingly similar to its marks since they all include the entire DUKE and/or BLUE DEVILS mark and merely add a generic term (“college”; “basketball”; “ncaa”) and the “.store” gTLD. When a disputed domain name wholly incorporates another’s mark, additional generic and similar terms have been found insufficient to defeat a finding of confusing similarity. Panels have also considered the nature of added terms, specifically whether they relate to a Complainant’s business or services under the mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See 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.”). Complainant submits that the added terms all naturally relate to Complainant as a university and its basketball program. Given that Respondent only adds related terms and a gTLD to the DUKE and/or BLUE DEVILS marks, the Panel finds the disputed domain names are confusingly similar to the marks 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 DUKE and BLUE DEVILS trademarks and to use them in its domain names , adding generic and similar words which do not negate the confusing similarity between the domain names and the respective trademarks;
(b) Respondent registered the disputed domain names on the respective dates set forth above;
(c) Respondent has caused the domain names to be used to offer unauthorized and counterfeit DUKE-branded goods for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or authorized Respondent to use the DUKE and BLUE DEVILS marks. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed 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 disputed domain names lists the registrant as “Jian Fei Guo.” See Registrar Email Verification. There is no other evidence to suggest an entity apart from Complainant is known by the DUKE and BLUE DEVILS marks. See Annex V, Exhibit 1 (Clement Decl.) at ¶ 60. Further, there is no other evidence to suggest that Respondent was authorized, licensed rights to, or was otherwise permitted to use the DUKE and BLUE DEVILS marks. See id. at ¶¶ 57-59. Therefore, the Panel finds Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent uses the disputed domain names to sell counterfeit and unauthorized DUKE-branded goods. Panels have held that a respondent’s use of a disputed domain name to offer for sale either a complainant’s legitimate goods without authorization or counterfeit goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides numerous screenshots of the resolving sites, which offer what are described as “officially licensed” sports jerseys for sale, some including the DUKE marks, logos, and athlete images. See Compl. Annex V, Exhibit 1.V. Complainant also provides side-by-side comparisons of some of Complainant’s legitimate officially licensed products with Respondent’s counterfeit products. See Compl. Annex V, Exhibit 1.W. Complainant emphasizes that Respondent is not a licensee of Complainant and so acts without authorization. See Compl. Annex V, Exhibit 1 (Clement Decl.) at ¶¶ 66, 67, 70, 71. As the Panel agrees, it finds Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names 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 has no rights or legitimate interests in the disputed domain names.
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 names were 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the disputed domain names in bad faith by competing with Complainant. A respondent’s use of a disputed domain name to offer the same or similar goods or services as those of a complainant has been found to indicate bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). As noted, Respondent sells the same DUKE-branded products for sale as Complainant. See Compl. Annex V, Exhibits 1.U (Complainant’s legitimate products) and 1.V (Respondent’s offerings). As the Panel agrees Respondent is competing with Complainant, it finds bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent uses the domain names to sell counterfeit products. Use of a domain name to sell counterfeit goods is further indication of bad faith disruption. See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). As indicated, Respondent purports to sell “officially licensed” DUKE athletic jerseys. See Compl. Annex V, Exhibit 1.V. As the Panel agrees, it finds that this conduct supports bad faith registration under Policy ¶ 4(b)(iii).
Thirdly, Complainant contends that Respondent seeks to cause consumer confusion by falsely affiliating itself with and passing itself off as a legitimate licensed retailer. Previous Panels have determined that a respondent’s use of a domain name to attract Internet traffic to a site that passes itself off as a complainant evinces bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Impersonating a complainant to mislead consumers has also been held as evidence of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See 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.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). In this instance, Respondent’s webpages hold itself out as a legitimate licensed retailer of DUKE-branded goods by using, for example, the DUKE marks in the website headers, Complainant’s logos, team member names and images, third-party logos with which Complainant does business, and describing goods as “officially licensed.” See Compl. Annex V, Exhibit 1.V. As the Panel determines that Respondent is passing itself off as being affiliated with Complainant, it finds bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Fourthly, Complainant notes that Respondent failed to respond to or comply with a letter informing Respondent of its infringing activities. A respondent’s failure to respond to a cease-and-desist letter may show bad faith. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides this letter in Annex V, Exhibit 1.X. The Panel find this to be evidence that Respondent registered and uses the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Fifthly, Complainant claims Respondent had actual knowledge of Complainant’s rights in the DUKE and BLUE DEVILS marks when registering the disputed domain names. Actual knowledge is sufficient to establish a respondent’s bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support this submission, Complainant points to the long use, trademark registrations, and substantial fame of the DUKE marks. See Compl. Annex V, Exhibits 1 and 2 (Decl. of Clements and McBride) (Annex V also includes various reports, rankings, and articles on Complainant). Complainant also notes Respondent’s use of the resolving websites, which purport to be licensed retailers. As the Panel determines Respondent had actual knowledge of Complainant’s rights in the DUKE and BLUE DEVILS marks when registering the disputed domain names, it finds bad faith registration under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the DUKE and BLUE DEVILS marks and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
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 <dukecollege.store>, <bluedevils.store>, <dukebluedevils.store>, <dukebluedevilsbasketball.store>, <dukebasketball.store>, <bluedevilsbasketball.store>, <ncaaduke.store>, <ncaadukebluedevils.store>, and <ncaabluedevils.store> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 1, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page