Oatey Co. v. Huimin Bian
Claim Number: FA2305002045219
Complainant is Oatey Co. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Huimin Bian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <storeoatey.com> and <oateysale.com>, registered with Name.com, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on May 18, 2023; Forum received payment on May 18, 2023.
On May 19, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <storeoatey.com> and <oateysale.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@storeoatey.com, postmaster@oateysale.com. Also on May 24, 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 June 20, 2023, 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.
A. Complainant
i) Complainant, Oatey Co., provides products for residential and commercial plumbing services. Complainant has rights in the OATEY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,546,946 registered on July 11, 1989). The disputed domain names are confusingly similar to Complainant’s OATEY mark as it adds the generic terms “store” or “sale” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its OATEY mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant.
iii) Respondent registered and uses the disputed domain names in bad faith by disrupting Complainant’s business by attempting to pass itself off as Complainant, using Complainant’s marks and logo to offer for sale unauthorized versions of Complainant’s products and using a privacy service. Respondent registered the disputed domain names with constructive and/or actual knowledge of Complainant’s rights in the OATEY mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain names were registered on October 13, 2022.
2. Complainant has established rights in the OATEY mark through its registration with the USPTO (e.g., Reg. No. 1,546,946 registered on July 11, 1989).
3. Respondent attempts to pass itself off as Complainant, using Complainant’s marks and logo to offer for sale unauthorized versions of Complainant’s products at the disputed domain names’ resolving websites that are confusingly similar to Complainant’s website and browser service.
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 asserts rights in the OATEY mark through its registration with the USPTO (e.g., Reg. No. 1,546,946 registered on July 11, 1989). Registration of a mark with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain names <storeoatey.com> and <oateysale.com> are confusingly similar to Complainant’s OATEY mark. Under Policy ¶ 4(a)(i), adding a generic term and the “.com” gTLD is insufficient in differentiating from the mark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain names incorporate Complainant’s mark in their entireties while adding the “store” or “sale” generic terms and the “.com” gTLD. The Panel thus finds the disputed domain names are confusingly similar to Complainant’s OATEY 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), 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 Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). 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 Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The unmasked WHOIS information for the disputed domain names identifies Respondent as “Huimin Bian.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See 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)). Complainant provides screenshots of the resolving webpages, which display Complainant’s logo and mark and purport to offer for sale unauthorized versions of Complainant’s goods. The Panel therefore finds Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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 argues Respondent registered and uses the disputed domain names in bad faith by disrupting Complainant’s business and using a privacy service. Under Policy ¶ 4(b)(iii), passing off as a complainant is a disruption of a complainant’s business and evidence of bad faith registration and use. 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)). The Panel recalls that the disputed domain names’ resolving webpages display Complainant’s logo and mark and purport to offer for sale unauthorized versions of Complainant’s goods. Complainant provides screenshots of the disputed domain names’ resolving webpages and Complainant’s own website showing that the disputed domain names currently resolve to websites that are confusingly similar to Complainant’s website and browser service. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant further contends Respondent registered the disputed domain names with bad faith constructive and/or actual knowledge of Complainant’s rights in the OATEY mark. Under Policy ¶ 4(a)(iii), constructive knowledge is insufficient in demonstrating bad faith; however, actual knowledge is evidence of bad faith and may be demonstrated where a respondent uses a resolving webpage to pass off as a complainant. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant’s rights in the OATEY mark at the time of registering the disputed domain names, and finds that Respondent registered the disputed domains in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storeoatey.com> and <oateysale.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 21, 2023
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