DECISION

 

iManage LLC v. diao qian qian

Claim Number: FA2401002079744

 

PARTIES

Complainant is iManage LLC ("Complainant"), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, USA. Respondent is diao qian qian ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <imanagellc.com>, registered with Gname 038 Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 18, 2024; Forum received payment on January 18, 2024.

 

On January 19, 2024, Gname 038 Inc confirmed by e-mail to Forum that the <imanagellc.com> domain name is registered with Gname 038 Inc and that Respondent is the current registrant of the name. Gname 038 Inc has verified that Respondent is bound by the Gname 038 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 January 22, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of February 12, 2024, 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@imanagellc.com. Also on January 22, 2024, 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 February 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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

In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:

 

(i)                       the disputed domain name wholly contains English words and characters;

(ii)                       Official WHOIS records reveal that Respondent is the  registrant of more than one hundred domain names comprised of English words and characters;

(iii)                       Respondent failed to object to the use of English in a UDRP proceeding to which it was very recently a party, captioned Carrefour SA v. diao qian qian, D2023-2000 (WIPO July 5, 2023);

(iv)                        these facts demonstrate Respondent's proficiency in

     English;

(v)                       Complainant is not conversant with Chinese; and

(vi)                        translating the documents required to prosecute this

     proceeding in Chinese would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding.

 

Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement "having regard to the circumstances of the administrative proceeding," we conclude that it would be in the interests of justice for us to grant Complainant's request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).

 

Accordingly, this proceeding will be conducted in the English language.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant has done business in the provision of document management software under the name and mark IMANAGE continuously since 1995.

 

Complainant holds a registration for the trademark IMANAGE, on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 2,566,557, registered May 7, 2002, and renewed most recently as of August 25, 2022.

 

Complainant does business online at the address <imanage.com>.

 

Respondent registered the domain name <imanagellc.com> on March 25, 2023.

 

The domain name is confusingly similar to Complainant's IMANAGE mark.

 

Respondent is not employing the domain name in connection with either a bona fide offering of goods and services or a legitimate noncommercial or fair use.

 

The domain name resolves in stages to a gambling website, from the operation of which Respondent seeks to obtain financial profit.

 

Respondent has not been commonly known by the domain name.

 

Respondent is not affiliated with Complainant in any way.

Complainant has not granted to Respondent either a license or any other form of permission to use its IMANAGE mark.

 

Respondent does not have trademark rights or other legitimate rights to or interests in the domain name.

 

A third-party malware analysis service has flagged the domain name as "malicious" for delivering a "Network Trojan Horse" and dropping suspicious files onto the browsing system of another party. 

 

It is likely that Respondent uses the domain name to facilitate a phishing or spoofing scam, the object of which is to misappropriate the sensitive personal and financial information of unsuspecting Internet users.

  

Respondent knew of Complainant and its rights in the IMANAGE mark when it registered the domain name. 

 

Respondent registered and is now using the domain name in bad faith.  

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)       Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)       the same domain name was registered and is being used by Respondent in bad faith.

 

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:

 

i.                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and 

ii. Respondent has no rights to or legitimate interests in respect   of the domain name; and 

iii. the domain name has been registered and is being used by Respondent in bad faith.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent's failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But 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

By virtue of its registration of the IMAnage trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel, FA 1738536 (Forum Aug. 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

This is true without regard to whether Complainant's rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):

 

[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <imanagellc.com> domain name is confusingly similar to Complainant's IMAnage trademark. The domain name incorporates the mark in its entirety, with only the addition of the three-letter combination "llc," the common abbreviation for "limited liability company," Complainant's chosen form of business organization, plus the generic Top Level Domain ("gTLD") ".com." These alterations of the mark, made in creating the domain name, do not enable it to escape the realm of confusing similarity under the standards of the Policy. See, for example, Bridgewater Assocs., LP v. Alex Tischler / All Weather Financial LLC, FA 1937479 (Forum May 3, 2021) (finding the domain name <all-weather-financial-llc.com> confusingly similar to the mark ALL WEATHER). See also Hormel Foods Corp. v. Brian Hershkovitz, FA 2047284 (Forum July 7, 2023) (finding the domain name <hormelfoodsllc.com> confusingly similar to the mark HORMEL).

 

Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):

  

[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) [confusing similarity] analysis.

 

This is because every domain name requires a gTLD or other TLD.

 

         Rights or Legitimate Interests

Policy ¶ 4(a)(ii) requires that Complainant make a prima facie showing that Respondent has neither rights to nor legitimate interests in the <imanagellc.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):

 

Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <imanagellc.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the IMANAGE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as "diao qian qian," which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Bhawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner).

                                                            

We next observe that Complainant asserts, without objection from Respondent, that the <imanagellc.com> domain name resolves in stages to a gambling website, from the operation of which Respondent seeks to obtain financial profit. In the circumstances here presented, this use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it 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.

 

See, for example, Ecolab USA Inc. v. Chen Guolong, FA 2005172 (Forum Aug. 19, 2022):

 

The Respondent has used the site attached to the Domain Name for a commercial Chinese language gambling site[,] which is not [either] a bona fide offering of goods and services or a legitimate non[-]commercial or fair use.

 

See also Sun Weddings, LLC v. Sunan Kalisongo, FA 2070389 (Forum Dec. 3, 2023):

 

The disputed domain name resolves to a website that offers gambling services. Previous panels have found that this is not a bona fide or legitimate noncommercial or fair use of a disputed domain name. (citations omitted)

 

Complainant makes an additional assertion that a third-party malware analysis service has flagged the <imanagellc.com> domain name as "malicious" for delivering a "Network Trojan Horse" and dropping suspicious files onto the browsing system of another party, and, further,

that it is likely that Respondent uses the domain name to facilitate a phishing or spoofing scam, the object of which is to misappropriate the sensitive personal and financial information of unsuspecting Internet users. This too is a use that is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it 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.  See, for example, GRF Services ltd. v. Super Privacy Service LTD, FA 1817534 (Forum Dec. 20, 2018), finding that a respondent had no rights to or legitimate interests in a challenged domain name where the evidence presented by a UDRP complainant demonstrated that "third-party threat detection services indicat[e] that the IP address associated with …[a]… disputed domain name is malicious and has been 'blacklisted'."

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The same evidence which establishes that Respondent has neither rights to nor legitimate interests in the disputed <imanagellc.com> domain name is also persuasive on the question whether the domain name has been registered and is being used in bad faith. See, for example, Ecolab USA Inc. v. Chen Guolong, FA 2005172 (Forum Aug. 19, 2022), supra, finding bad faith in the registration and use of the domain name challenged in that proceeding. See also GRF Services ltd. v. Super Privacy Service LTD, FA 1817534 (Forum Dec. 20, 2018), discussed supra, finding bad faith in the registration and use of the domain name considered there.

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

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

 

 

Terry F. Peppard, Panelist

Dated: February 21, 2024