DECISION

 

Triple Crown Nutrition, Inc. v. huang jing yuan

Claim Number: FA2311002069563

 

PARTIES

Complainant is Triple Crown Nutrition, Inc. ("Complainant"), represented by Eran Kahana of Maslon, LLP, Minnesota, USA. Respondent is huang jing yuan ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <triplecrownfeeds.com>, registered with Gname.com Pte. Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 3, 2023; Forum received payment on November 3, 2023.

 

On November 7, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <triplecrownfeeds.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 November 14, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of December 4, 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@triplecrownfeeds.com. Also on November 14, 2023, the Chinese and English 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 in Chinese and English.

 

On May 12, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Complainant has submitted that the administrative proceeding be conducted in the English language pursuant to UDRP Rule 11(a). That Rule provides that the language of the proceeding is to be the language of the registration agreement relating to the domain name at issue, unless the Panel determines that it should be a different language having regard to the circumstances of the proceeding. Complainant makes this request in light of the Chinese language Registration Agreement. It is also the 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, other factors that might also show Respondent's 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 Complainant or Respondent's understanding of the Chinese language of 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 language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the 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.").

 

In support of its application, the Complainant relies on the fact that both the Complainant's trademark TRIPLE CROWN and the dominant part of the domain name at issue, "triplecrown" have a unique meaning, namely that they invoke the trifecta of three pre-eminent horse races in the United States. Thus, as the Respondent has chosen an English language domain name, in effect copying an English language trademark and aiming at a largely English-speaking market, it is more likely than not that the Respondent probably has familiarity with and understanding of the English language, such that conducting the proceeding in English will not prejudice it. The Panel agrees with this approach.

 

Moreover, if English is not made the language of the proceeding, the documents will all have to be translated into Chinese, with which the Complainant is not conversant, and this seems time consuming, expensive and unnecessary.

 

Also, the ".com" Top-Level Domain primarily targets English-speaking users, a process using the English language.

 

Accordingly, and pursuant to UDRP Rule 11(a), the Panel finds that, after considering all of the circumstance of the proceeding, it decides that the proceeding should be conducted in the English language.

 

CONTENTIONS OF THE PARTIES

A.       Complainant

       Complainant made the following contentions.

1.       Complainant is a United States company which is a nationally and internationally known manufacturer and seller of horse and other animal feed products under the brand and trademark TRIPLE CROWN. 

2.       The Complainant owns numerous trademarks for TRIPLE CROWN, including the trademark TRIPLE CROWN registered with the United States Patent and Trademark Office ("USPTO") number 0901870, registered on November 3, 1970, and numerous other trademarks for TRIPLE CROWN and derivatives thereof registered with the USPTO and other international trademark authorities (collectively "the TRIPLE CROWN trademark").

3.       The Complainant also owns numerous domain names that include the words "triplecrown" and which it uses in its business as official domain names and for its own website. Several of those domain names include the expression "triplecrownfeed" with various extensions.

4.       The Respondent registered the <triplecrownfeeds.com> domain name ("the disputed domain name") on May 7, 2021.

5.       In so doing, Respondent has incorporated in the disputed domain name the Complainant's TRIPLE CROWN trademark without any authority to do so and has added the generic word "feeds", making a pluralized version of the Complainant's own domain name <triplecrownfeed.com>.

6.       The Complainant acquired registered trademark rights to the TRIPLE CROWN mark long prior to the registration by the Respondent of the disputed domain name.

7.       The disputed domain name is confusingly similar to the Complainant's TRIPLE CROWN trademark.

8.       That is so because the Respondent has added to the trademark the word "feeds" which is a generic word which exacerbates the confusing similarity between the disputed domain name and the trademark and would induce internet users to believe that it was affiliated with the Complainant as the Complainant is renowned for its feed product provided under the mark.

9.       The Respondent has no right or legitimate interest in the disputed domain name. That is so because: 

(a)       the Respondent registered the domain name on May 7, 2021, but the Complainant had been using its TRIPLE CROWN trademark in its business at least as early as 1996;

(b)       the disputed domain name is confusingly similar to the TRIPLE CROWN mark;

(c)       the Respondent has not caused the disputed domain name to resolve to an active website but has allowed it to produce a blank page indicating "The webpage is not available";

(d)       the Respondent has never been sponsored or licensed by the Complainant to use its TRIPLE CROWN mark as it has done or at all;

(e)       the Respondent is not commonly known by the domain name;

(f)       the Respondent is not using the domain name for a bona fide offering of goods or services or for a legitimate non-commercial fair use.

10.       Respondent has registered and is using the domain name in bad faith. That is so because the Respondent:

(a)       had actual knowledge of the Complainant and its mark when it registered the disputed domain name or should have had such knowledge;

(b)       has no connection or affiliation with the Complainant and has not been sponsored or licensed by the Complainant to register or use the mark;

(c)       the Respondent's decision to register and use the domain name was opportunistic and in bad faith;

(d)       the registration and use of the domain name was calculated to mislead internet users and confuse them as to the status of the domain name and whether it had any relationship with the Complainant;

(e)       registered the disputed domain name to capitalize on the goodwill associated with the Complainant's TRIPLE CROWN mark.

11.       The Complainant has cited numerous prior UDRP decisions to support its contentions.

12.       The Complainant submits that it has shown all of the elements it must establish and that the domain name should therefore be transferred from the Respondent to the Complainant.

 

B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       Complainant is a United States company which is a nationally and internationally known manufacturer and provider of horse and other animal feed products under the brand and trademark TRIPLE CROWN.

2.       The Complainant owns numerous trademarks for TRIPLE CROWN, including the trademark TRIPLE CROWN registered with the United States Patent and Trademark Office ("USPTO") number 0901870, registered on November 3, 1970, and numerous other trademarks for TRIPLE CROWN and derivatives registered with the USPTO and other international trademark authorities ( collectively "the TRIPLE CROWN trademark").

3.       The Respondent registered the <triplecrownfeeds.com> domain name ("the disputed domain name") on May 7, 2021.

4.       Complainant acquired its rights in the TRIPLE CROWN trademark well prior to the registration of the disputed domain name.

5.       The evidence establishes that the disputed domain name is confusingly similar to the Complainant's TRIPLE CROWN trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used in bad faith.

6.       Accordingly, the disputed domain name should be transferred to the Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely in this proceeding. The evidence shows that the Complainant has established its rights in numerous trademarks for TRIPLE CROWN, including the trademark TRIPLE CROWN registered with the United States Patent and Trademark Office ("USPTO") number 0901870, registered on November 3, 1970, and numerous other trademarks for TRIPLE CROWN and derivatives registered with the USPTO and other international trademark authorities (collectively "the TRIPLE CROWN trademark").That is demonstrated by numerous registrations detailed in the Complaint. The Complainant has adduced evidence of those registrations, which the Panel has examined and which it accepts. Registration of a trademark with a recognized authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) and that the Complainant "has" a trademark, which is what it must prove and which it has established. Since Complainant has registered and has established its rights in the trademark through its widespread registrations, the Panel finds that the Complainant has rights in the TRIPLE CROWN trademark  mark under Policy ¶ 4(a)(i).

 

It should also be added that all of the registrations were effected before the Respondent registered the disputed domain name.

 

The next question that arises is whether the disputed domain name is confusingly similar to Complainant's TRIPLE CROWN trademark. The Complainant argues that the disputed domain name is confusingly similar to the trademark because the Respondent has incorporated the mark in the domain name without any authority to do so and has added the generic word "feeds", making a pluralised version of the Complainant's own domain name <triplecrownfeed.com>. The Complainant also argues that the the word "feeds", which is a generic word, only exacerbates the confusing similarity between the disputed domain name and the trademark and that this would induce internet users to believe that it was affiliated with the Complainant as the Complainant is renowned for its feed product provided under the mark. The domain name also includes the gTLD ".com". The Panel agrees with the Complainant's submission in every respect because the domain name is similar to the domain name and confusingly so. Under Policy ¶ 4(a)(i), the addition of a generic, descriptive or commonly used expression word to a trademark such as the word  "feed" does not negate a confusing similarity which is otherwise present between the domain name thus created and a trademark, as it is in the present case. Indeed, the addition of the word "feeds" implies that the domain name is invoking the trademark and its official and legitimate use. Adding the generic Top Level Domain cannot negate a confusing similarity that is otherwise present between the domain name and the trademark. Taken as a whole, the domain name would be interpreted by internet users to mean, and was no doubt intended to mean, that it is invoking the Complainant and its use either by the Complainant or with its approval and that the Respondent was using it legitimately. It is therefore clear that the domain name is similar to the trademark and confusingly so.

 

The Panel therefore finds that the Respondent's domain name is confusingly similar to Complainant's TRIPLE CROWN  mark under Policy ¶ 4(a)(i).

 

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the 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) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:

 

(a)       the Respondent has chosen to take the Complainant's TRIPLE CROWN trademark and to use it in its domain name, adding  the word "feeds" and adding also the gTLD ".com", neither of which negates the confusing similarity between the domain name and the mark but exacerbates it, generating the clear impression that it is referring to and invoking the TRIPLE CROWN trademark and its use by the Complainant in its business and that it is authorized to do so. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;

(b)       the Respondent registered the disputed domain name on May 7, 2021 and although it has not caused the disputed domain name to resolve to an active website, the Respondent has allowed it to produce a blank page indicating "The webpage is not available", none of which it had the right to do and none of which gave it a legitimate interest in the domain name;

(c)        the Respondent registered the domain name on May 7, 2021, but the Complainant had been using its TRIPLE CROWN trademark in its business at least as early as 1966;

(d)        in registering the domain name on May 7, 2021, the Respondent was clearly invoking the TRIPLE CROWN trademark which the Complainant had been using in its business since at least 1966; 

(e)       the disputed domain name has already been seen to be confusingly similar to the TRIPLE CROWN mark;

(f)       the Respondent has never been sponsored or licensed by the Complainant to use its TRIPLE CROWN mark as it has or at all;

(g)        the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent to register the domain name or to use the TRIPLE CROWN trademark in any way;

(h)       the evidence also shows that the Respondent is not commonly known by the domain name;

(i)       the evidence also shows that the Respondent is not using the domain name for a bona fide offering of goods or services or for a legitimate non-commercial fair use.

(j)       The Respondent had an opportunity to show circumstances to the contrary of the above conclusions if they were justified but it has not done so.

 

Complainant has correctly cited several prior UDRP decisions that support the foregoing contentions.

 

All of these matters go to make out the prima facie case against Respondent.

As the Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered in bad faith and that it 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.

 

The Complainant has relied on several grounds to show that this is so, and the Panel agrees with each of them. They are as follows.

 

First, it is clear from the evidence that the Respondent registered and used the disputed domain name to capitalize on the goodwill associated with the Complainant TRIPLE CROWN mark and no doubt with the intention to trade off that goodwill for its own benefit. Not to make too fine a point of it, the Respondent has stolen the Complainant's name and trademark and readied itself to use them in a deceptive way that can reasonably be expected to be inimical to the interests of the Complainant. Such behavior is clearly in bad faith.

 

Secondly, the fame and standing of the Complainant show that the Respondent must have had actual knowledge of the Complainant and its mark at the time it registered the domain name and that it therefore knew exactly what it was doing and the entity it was targeting when it registered the domain name.

 

Such conduct is clearly in breach of Policy ¶ 4(b)(iii) because it could only be done with the intention of disrupting the Complainant's business.

 

It is also in breach of Policy ¶ 4(b)(iv) because it must have been done with the intention of causing confusion between the mark and the domain name and at the same time with the intention of trading off the goodwill associated with the mark.

 

Respondent has therefore registered and has used the domain name in bad faith within the meaning of Policy ¶4 (a) (iii) and 4(b)(iv).

 

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name incorporating the TRIPLE CROWN trademark and in view of the conduct that the Respondent has engaged in when using the domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has correctly cited several prior UDRP decisions that support all of the foregoing contentions.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <triplecrownfeeds.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: December 6, 2023