George E. Bulkeley v. li qiang / yoofa technology limited
Claim Number: FA2304002039428
Complainant is George E. Bulkeley (“Complainant”), represented by Parna A. Mehrbani of Tonkon Torp LLP, Oregon, USA. Respondent is li qiang / yoofa technology limited (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kellybulkeley.org>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on April 10, 2023; Forum received payment on April 10, 2023.
On April 11, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <kellybulkeley.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 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@kellybulkeley.org. Also on April 12, 2023, 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 May 4, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, George E. Bulkeley, aka Kelly Bulkeley, is an expert in the fields of dreams and the psychology of religion. He has common law rights in the KELLY BULKELEY mark through extensive and widespread use, since 1991, in the publication of books, articles, blog posts, services to universities, and various public speaking engagements at conferences and on radio programs. Complainant was the owner of the <kellybulkeley.org> domain name but it was inadvertently lost when the credit card on file with Complainant’s Registrar expired. Respondent’s <kellybulkeley.org> domain name is identical and confusingly similar to the KELLY BULKELEY mark as it includes the exact mark followed by the “.org” gTLD.
Respondent lacks rights or legitimate interests in the <kellybulkeley.org> domain name since Respondent is not licensed or authorized to use Complainant’s KELLY BULKELEY mark and is not commonly known by the disputed domain name. It uses the domain name to host a website that is modeled on the website Complainant previously offered at the site.
Respondent registered and uses the <kellybulkeley.org> domain name in bad faith by seeking to pass itself off as Complainant. Respondent also had actual knowledge of Complainant’s rights in the KELLY BULKELEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated common law rights in the KELLY BULKELEY trademark and the disputed domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby and its use of a website that seeks to pass itself off as originating with Complainant is not a bona fide offering of goods or services and it not a legitimate noncommercial or fair use; and
- Respondent’s use of the disputed domain name indicates its bad faith disruption of Complainant’s business and its intention to seek commercial gain based on a likelihood of confusion with Complainant’s mark.
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”).
Complainant claims rights in the trademark KELLY BULKELEY through common law. This form of trademark rights has been accepted by past Panels. See, e.g., Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”) For a complainant to demonstrate common law rights in a mark, it must provide evidence that the mark has acquired secondary meaning in the minds of the relevant consumer group through actual use in the offering and sale of goods or services. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”) A personal name may also function as a common law trademark, if supported by proper evidence. See Karen Finerman v. Ben Johnston / Bookclout, FA 1606620 (Forum Apr. 7, 2015) (finding that “Complainant has presented evidence that her name, KAREN FINERMAN, has achieved widespread recognition in connection with financial, charitable and other services, such that KAREN FINERMAN has obtained secondary meaning as identifying Complainant as the source of the services she offers.”) Here, Complainant submits a signed Declaration Of Mr. George E. Bulkeley AKA Kelly Bulkeley (the “Declaration”) in which he states that he has been known both personally and professionally as KELLY BULKELEY since birth. Complainant goes on to state that he has, since 1991, published more than twenty books, over one hundred book chapters, and numerous articles and blog posts on the subject of dreams and the philosophy of religion, all under the KELLY BULKELEY mark. The Declaration further claims that Complainant uses this mark in providing educational services through the University of Chicago, he regularly speaks at media events and professional conferences, and that his work on dreams and the philosophy of religion has been covered by numerous well-known media outlets, such as The Wall Street Journal, The Atlantic, the New York Times, and Time Magazine. Complainant claims to own the <kellybulkeley.com> domain name, which he used since 2000[i] and that he previously owned the disputed domain name, registering it in 2013 to use in connection with his services. It is noted that Complainant’s ownership of the disputed domain name inadvertently lapsed after his credit card expired and the new card was not updated with the Registrar. While Complainant does not provide sample images of any of his works, he submits lists of his books and articles as well as links to various news articles and the signed Declaration concludes with the statement that “Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that the foregoing statements are true and correct.” Although primary evidence in support of claims is always preferable, under the present circumstances where Complainant has provided secondary evidence, such as lists and links, which are supported by a signed declaration, and where the Respondent has not objected to Complainant’s evidence or assertions, the Panel is prepared to accept such submissions at face value. Thus, the Panel determines that Respondent has sufficiently shown the existence of secondary meaning in the mark and it finds that Complainant has common law rights in the KELLY BULKELEY mark under Policy ¶ 4(a)(i).
Next, Complainant asserts that the <kellybulkeley.org> domain name is identical and thus confusingly similar to its KELLY BULKELEY mark. When a disputed domain name wholly incorporates a complainant’s mark, Panels have found the domain name to be identical to the mark. See Marquette Golf Club v. Al Perkins, supra (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”) Given that Respondent’s <kellybulkeley.org> domain name uses the entire and exact KELLY BULKELEY mark, only adding the “.org” gTLD, the Panel finds that it is identical to Complainant’s KELLY BULKELEY 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 name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 has no rights or legitimate interests in the <kellybulkeley.org> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the KELLY BULKELEY mark. In considering this issue, 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 that a complainant has authorized the use of a mark, this may support a finding 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)”); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS record for <kellybulkeley.org>, as revealed by the concerned Registrar, lists the Registrant as “li qiang” with the organization “yoofa technology limited.” Further, Complainant asserts that Respondent is not authorized or licensed to use the KELLY BULKELEY mark and Respondent has not contested this. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by, and lacks rights or legitimate interests in, the <kellybulkeley.org> domain name per Policy ¶ 4(c)(ii).
Complainant does not address Policy ¶¶ 4(c)(i) or (iii) but it does claim that “Respondent has modeled the website at the Domain Name after the website Complainant previously offered at the site.” Despite the lack of any assertions specifically mentioning Policy ¶¶ 4(c)(i) or (iii), the evidence submitted and statements in other portions of the Complaint do provide sufficient grounds upon which the Panel can assess the merits of these two Policy sub-sections. Complainant asserts that, by modeling its website after the content previously hosted by Complainant at the disputed domain name, “Respondent is attempting to pass itself off as Complainant” and “deceive users into trusting the content.” Such activity has been held not to be a bona fide offering or goods or services nor a legitimate noncommercial or fair use of a disputed domain name without intent for commercial gain. See Associated Newspapers Limited v. Anne Millburn, FA 1937024 (Forum Apr. 14, 2021) (“Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Name previously resolved to Respondent’s web site which impersonated and competed with Complainant”). Complainant’s assertions amount to a claim that the <kellybulkeley.org> website has not been substantially changed since the domain name expired and was deleted from Complainant’s account. Complainant submits a screenshot of the website and the Panel finds that it does support Complainant’s assertions as the site displays a “KB” logo followed by the name “KB Dream & Sleep”. It also displays the text “Do Dreams Have Meaning?” followed by links titled “Psychology”, “Religion”, “Culture”, and “Science”. These are all topics which are the focus of Complainant’s work. Finally, the site contains links to blog posts on the abovementioned topics, three links to Complainant’s social media pages, and it displays the footer “© KB Dream & Sleep”. Respondent has filed no response or made any other submission in this case to rebut Complainant’s prima facie case and so the Panel concludes that Respondent’s actions with respect to the disputed domain name do not meet the criteria of Policy ¶¶ 4(c)(i) or (iii) nor do they otherwise demonstrate that Respondent has gained any rights or legitimate interests.
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the KELLY BULKELEY mark when registering the <kellybulkeley.org> domain name. Actual knowledge can create a solid foundation upon which to build a case for Respondent’s bad faith. See WordPress Foundation v. mich delorme / mich d dots tlds, FA 1584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”); see also Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). To support this assertion, Complainant notes that the site is modeled after Complainant’s own prior use of the domain name and was registered after Complainant’s ownership accidentally lapsed. Based on the submitted evidence in this case, the uniqueness of Complainant’s mark, and the content of the website to which the disputed domain name resolves, the Panel finds it highly likely that Respondent had knowledge of the mark the time that it registered the domain name.
Complainant further argues that Respondent registered and uses the <kellybulkeley.org> domain name in bad faith by disrupting its business and by causing consumer confusion through a website that passes itself off as Complainant. Previous Panels have determined that a respondent’s use of a domain name to attract Internet traffic to a site that mimics and 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)). Passing off has also been held as evidence of bad faith attraction for commercial gain based on a likelihood of confusion 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.”). In this case, Complainant provides a screenshot of the website to which Respondent’s <kellybulkeley.org> resolves as noted in the previous section. Complainant declares this site is “modeled after” the site it operated at the same domain name and that Respondent “evidences a clear intent to disrupt Complainant’s business” by “taking predatory advantage of Complainant, his name, reputation, and the goodwill associated with and represented by the Mark.” It goes on to claim that “Respondent’s use of Complainant’s Mark is fooling visitors into believing that the information provided at the Domain Name is offered by and endorsed by Complainant…” As the submitted screenshot does support Complainant’s assertions and as Respondent has not participated in these proceedings to offer any other explanation for its actions, the Panel finds that Respondent is passing itself off as Complainant and taking advantage of the KELLY BULKELEY mark all in bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kellybulkeley.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 9, 2023
[i] The Panel has browsed to the <kellybulkeley.com> domain name only to find a Chinese language website focused on advice relating to babies and young children. This site does not mention Complainant or the subject of his work and it may be that this domain name is the subject of other action by Complainant based on the same expired credit card issue that resulted in the expiration of the disputed domain name.
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