Dow Jones & Company, Inc. v. ZONGYI LIN / Danny Williams / Birch Donnie
Claim Number: FA2304002042463
Complainant is Dow Jones & Company, Inc. (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is ZONGYI LIN / Danny Williams / Birch Donnie (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wsjdeals.com>, <wsjsubscribe.com>, <wsjplan.com>, and <wsjsupport.com>, registered with GoDaddy.com, LLC; NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on April 30, 2023; Forum received payment on April 30, 2023.
On Apr 30, 2023; May 01, 2023, GoDaddy.com, LLC; NameCheap, Inc. confirmed by e-mail to Forum that the <wsjdeals.com>, <wsjsubscribe.com>, <wsjplan.com>, and <wsjsupport.com> domain names are registered with GoDaddy.com, LLC; NameCheap, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC; NameCheap, Inc. has verified that Respondent is bound by the GoDaddy.com, LLC; NameCheap, Inc. 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 May 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@wsjdeals.com, postmaster@wsjsubscribe.com, postmaster@wsjplan.com, postmaster@wsjsupport.com. Also on May 8, 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.
A timely Response was received and determined to be complete on June 20, 2023.
On June 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 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.”
The instant dispute was filed with regard to 4 domain names. Complainant supports its assertion that the domain names’ registrants should be treated as a single entity by revealing: (i) the domain names share and utilize the same domain structure, namely, Complainant’s identical WSJ mark followed by a generic or descriptive term (e.g., deals and subscribe) and the domain extension “.com”; (ii) the domain names; <wsjsubscribe.com>, <wsjdeals.com>, and <wsjplan.com> were registered using the same registrar, namely, GoDaddy, months apart; (iii) the WHOIS information uses some of the same, similar, or overlapping information, including listing “Zongyi Lin” as the registrant for the domains names <wsjsubscribe.com> and <wsjdeals.com>, using the phone number +1.6463923374 for <wsjsupport.com> and <wsjdeals.com>, and using email addresses that start with and feature “zlin” and “zylin,” which stands for “Zongyi Lin,” for <wsjdeals.com> and <wsjplan.com>; and (iv) the domain names are all used in the same, similar, or connected manner, including <wsjdeals.com>, <wsjplan.com>, and <wsjsubscribe.com> each hosting content that is identical or similar to each other and the website located at <wsjplan.com> displaying an email address that features the <wsjsupport.com> (i.e., fulfill@wsjsupport.com). Furthermore, Complainant’s position that the domain names’ registrants be treated as a single entity is unopposed.
Based on the foregoing the Panel concludes that Complainant has sufficiently presented evidence demonstrating that the at-issue domain names are jointly controlled and elects to treat the at-issue domain names’ nominal registrants as a single respondent (Respondent) for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant Dow Jones has become a world-renowned global provider of news and business information.
Complainant asserts rights in THE WALL STREET JOURNAL and WSJ marks based upon registration with the United States Patent and Trademark Office (“USPTO”). Complainant also asserts common law rights in the WSJ marks.
The <wsjdeals.com>, <wsjsubscribe.com>, <wsjplan.com>, and <wsjsupport.com> at-issue domain names are identical or confusingly similar to Complainant’s marks because the domain names prominently start with and feature the identical WSJ mark in its entirety in combination with generic or descriptive terms (e.g. “deals” and “subscribe”) as well as the generic top level domain (“gTLD”) “.com”.
Respondent lacks rights and legitimate interests in the at-issue domain names. Respondent is not commonly known any at-issue domain names, nor has Complainant authorized Respondent to use any of its trademarks. Additionally, Respondent has not used the at-issue domain names in connection with a bona fide offering of goods or services. Rather, Respondent holds itself out to be an authorized reseller of Complainant’s WALL STREET JOURNAL and is using the domain names to pass off as Complainant while addressing a website purporting to offer competing or related subscription services. Respondent is engaging in a phishing scheme. The <wsjsupport.com> domain name resolves to an inactive webpage.
Respondent registered and uses the at-issue domain names in bad faith. Respondent is creating a likelihood of confusion between the at-issue domain names and Complainant’s marks, thus disrupting Complainant’s business. Respondent is using the domain names to pass itself off as Complainant and offer competing goods and services. Respondent is using the domain names as part of a phishing scheme. Respondent has provided false contact information. Respondent has a history of bad faith registration. The <wsjsupport.com> domain name resolves to an inactive webpage. Lastly, Respondent had actual knowledge of Complainant’s rights in the WSJ Marks prior to registration of the disputed domain names.
B. Respondent
Respondent contends as follows:
There is no trademark violation involved. Respondent also claims that there is no counterfeit violation involved.
C. Additional Submissions
Complainant in its additional submission contends as follows:
Respondent does not comply with the UDRP Rules or the Forum’s Supplemental Rules and should thus its response should be disregarded.
Respondent’s claim that it has rights and legitimate interests in the at-issue domain names because such use is somehow authorized by Complainant’s “retail company, First American News LLC” is self-serving and baseless as the “retail company” is not affiliated with Complainant and not authorized to use or grant permission to use Complainant’s trademarks.
Further, the fact that certain other domain name are not subject to the instant complaint is irrelevant and without merit for present purposes.
Respondent in its additional submission contents as follows:
The at-issue domain names are using the special trademark mention in the Complaint and selling the WSJ publication products and have been selling on the internet for many years. However, the domain names have been only registered for a few months.
Complainant wants to take advantage of the UDRP to steal Respondent’s domain names by taking advantage of loopholes.
Complainant does not document its claim to be employed by the WSJ, but asked Respondent to produce confidential authorization documents.
Respondent is employed by the WSJ company. Complainant wants to steal Respondent’s domain names by making up a story.
Complainant has rights in the THE WALL STREET JOURNAL and WSJ mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the THE WALL STREET JOURNAL and WSJ trademarks.
Respondent uses the at-issue domain names to address websites posing as Complainant’s genuine website and offering unauthorized THE WALL STREET JOURNAL and WSJ related products for sale, while holding one of the domain names passively.
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.
The at-issue domain names are each confusingly similar to a mark in which Complainant has rights.
Complainant’s USPTO trademark registration for THE WALL STREET JOURNAL and/or WSJ sufficiently demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s at issue domain names are each confusingly similar to Complainant’s THE WALL STREET JOURNAL and/or WSJ marks. The domain names each consist of the WSJ mark (which is also an initialism for The WALL STREET JOURNAL), followed by various suggestive generic terms, and with all followed by the “.com” top level. The differences between any of the at-issue domain names and Complainant’s THE WALL STREET JOURNAL and WSJ trademarks are insufficient to distinguish any domain name from Complainant’s marks for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s at-issue domain names are each confusingly similar to Complainant’s trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also ,The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Zongyi Lin” and the record before the Panel contains no evidence that tends to prove that any nominal registrant is commonly known by one of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain names to hold itself out as being an authorized reseller of Complainant’s products, when it is not. Complainant shows that the authorization letter proffered by Respondent is fraudulent. Respondent’s use of the domain names thus constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names per Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Techs., Inc., FA 96577 (Forum Feb. 27, 2001) (finding that the respondent, an unauthorized reseller of the complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to the complainant’s mark); see also Alticor Inc. v. TRAVIS JOHNSON, FA 1718654 (Forum Apr. 10, 2017) (holding that even licensed resellers can be prohibited from use of a complainant’s mark, and therefore may lack rights and legitimate interests in a domain name containing that mark).
One at-issue domain names appear to be held passively. Passively holding the domain name <wsjsupport.com> likewise constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names per Policy ¶¶ 4(c)(i) or (iii); see also, CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Further, Respondent uses the at-issue domain names and Complainant’s other intellectual property to pass itself off as Complainant while purporting to provide identical, competing, similar, or related subscription services to Complainant’s publications and, in some instances, to third-party competing publications. Respondent’s use of the at-issue domain names to pass itself off as Complainant to offer competing services does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Additionally, Respondent’s use of the at issue domain names and their referenced websites appear to support a scheme to collect financial payments and information from website visitors who Respondent has duped into falsely believe that they are dealing with Complainant. Use of the at-issue domain names in connection with such a scheme does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent registered multiple confusingly similar domain names that are at-issue in the instant dispute; Respondent has also suffered a prior adverse UDRP decision involving Complainant. Respondent thus discloses a pattern of domain name abuse that points to Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); see also, 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)).
Next, Respondent uses the at-issue domain names to pass itself off as Complainant and address websites designed to appear as if they may be controlled or sponsored by Complainant while offering unauthorized products. Notably, the websites display several of Complainant’s trademarks and erroneously claims to be an official associate of Complainant. Respondent’s use of the confusingly similar domain names in this manner disrupts Complainant’s business, commercially exploits the confusing similarity that Respondent created between Complainant’s trademarks and each of the at-issue domain names, and indicates Respondent’s bad faith registration and use of the at-issue domain names per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). 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)); see DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also, G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract internet users to its commercial website to sell the complainant’s products).
One of the domain names is inactive. Respondent’s passive holding of the <wsjsupport.com> domain names shows Respondent’s bad faith registration and use of the inactive confusingly similar domain names under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also, Solar Turbines v. Ogunade (NAF FA1810001811640) (“. . . Respondent inactively holds the <solarsturbines.com> domain name, thereby supporting a finding of bad faith registration and use under Policy ¶ 4(a)(iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the THE WALL STREET JOURNAL and WSJ marks when it registered the at-issue domain names. Respondent’s actual knowledge is evident given the notoriety of Complainant and its trademarks; given Respondent’s registration of multiple domain names incorporating Complainant’s trademarks; given Respondent’s prior UDRP dispute concerning Complainant; and given Respondent’s use of the domain names to pass itself off as Complainant and offer unauthorized products for sale. Respondent’s registration of the at-issue domain names with knowledge of Complainant’s trademark rights THE WALL STREET JOURNAL and/or WSJ further shows Respondent’s bad faith registration and use regarding each at-issue domain names pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wsjdeals.com>, <wsjsubscribe.com>, <wsjplan.com>, and <wsjsupport.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 28, 2023
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