DECISION

 

Dentons Group v. Chen Yu

Claim Number: FA2402002086044

 

PARTIES

Complainant is Dentons Group ("Complainant"), represented by Samuel Fifer of Dentons US LLP, Illinois, USA. Respondent is Chen Yu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dentons-sg.com>, registered with DNSPod, Inc..

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 28, 2024; Forum received payment on February 28, 2024.

 

On February 28, 2024, DNSPod, Inc. confirmed by e-mail to Forum that the <dentons-sg.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 February 29, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of March 20, 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@dentons-sg.com. Also on February 29, 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 March 22, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

On March 26, 2024, the Panel issued a Procedural Order to Complainant to provide additional evidence supporting its specific contentions. On March 28, 2024, Complainant submitted an Additional Submission in response to the Panel's Procedural Order.

 

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 Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English.  The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).

 

Complainant contends that i) the disputed domain name resolves to a fraudulent website, as described within; ii) Respondent registered the disputed domain name with knowledge of the renown of Complainant's DENTONS trademark, an English-language mark used in connection with goods and services offered by Complainant exclusively to consumers who reside in the United States and who predominantly speak English; iii) the success of any website associated with the disputed domain name will depend upon visitors recognizing the DENTONS trademark and associating it with Complainant and its goods and services, an association that occurs entirely in English; iv) by registering the disputed domain name, which uses English characters and Complainant's trademark, Respondent demonstrates a clear grasp of the English language; v) Respondent would suffer no real prejudice if these proceedings were conducted in English; and vi) Complainant lacks fluency in Chinese and would have to incur substantial costs to engage a commercial translation service to translate documents submitted in this proceeding.

 

The Panel finds that the disputed domain name resolves to a website, which provides the contents in English. Therefore, it is inferred that Respondent is conversant and proficient in English. In the absence of Response and given no objection to Complainant's request for the language of proceeding, after considering the circumstances of the present case, pursuant to UDRP Rule 11(a), the Panel decides English to be the language of the proceeding. 

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is a renowned global law firm, which was founded in 2013. Since in or around its founding, Complainant has used and/or registered the name and mark DENTONS by itself and as the dominant component of other marks across the globe in connection with a number of services, including legal services. Complainant has rights in the DENTONS mark, inter alia, through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,535,637 registered May 27, 2014). The disputed domain name is confusingly similar to Complainant's DENTONS mark as it incorporates Complainant's mark merely adding a hyphen and the generic term "sg."

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use the DENTONS mark. There is no evidence to show that Respondent is commonly known by the disputed domain name. Respondent has not made use of, or demonstrable preparations to initiate use, of the disputed domain name or names corresponding to the disputed domain name in connection with a bona fide offering of goods or services, nor could Respondent do so in light of the well-known status of Complainant's DENTONS mark and Complainant's exclusive rights in that mark. Instead, Respondent uses the disputed domain name to confuse consumers into believing it and its purported services are associated with Complainant when they are not.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name without a bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant's well-known DENTONS mark. Respondent allows visitors to communicate on the website via Crisp Chatbot and leads visitors to WhatsApp for further communications. The disputed domain name seeks to exploit Complainant's good will in its DENTONS mark and confuse consumers into believing that Respondent and its purported services are or are affiliated with Complainant when they are not. Respondent's use and registration of the disputed domain name disrupts Complainant's business by depriving it of the right to host a website at the disputed domain name to promote its services to the public. Actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name is adequate to find bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on January 5, 2024.

 

2. Complainant has established rights in the DENTONS mark based on registration of the mark with the USPTO (e.g., Reg. No. 4,535,637 registered May 27, 2014).

 

3. The disputed domain name resolves to a website, which prominently displays Complainant's logo mark and offers competing legal services. 

 

4. Respondent allows visitors to communicate on the disputed domain name's resolving website via Crisp Chatbot and leads visitors to WhatsApp for further communications.

 

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 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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the DENTONS mark based upon trademark registrations around the world including registration with the USPTO (e.g., Reg. No. 4,535,637 registered May 27, 2014). Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the DENTONS mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).

 

Complainant contends that the disputed domain name <dentons-sg.com> is confusingly similar to Complainant's DENTONS mark because it contains Complainant's mark in its entirety. The additional non-distinctive elements, i.e., a hyphen, "SG" and the ".com" gTLD do not negate the confusing similarity of the disputed domain name. The Panel agrees that the addition of non-distinctive elements does not negate confusing similarity of the domain name to the mark. See Expedia. v. Sameh Elsayed, FA 1941132 (Forum  May 10, 2021) ("The disputed domain name <expedia-traveleg.com> incorporates Complainant's registered EXPEDIA trademark, adding a hyphen, the generic term 'travel,' the geographic abbreviation 'eg,' and the '.com' top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark.). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's DENTONS mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the DENTONS mark. There is no evidence or reason to suggest Respondent is, in fact, commonly known by the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to confuse consumers into believing it and its purported services are associated with Complainant when they are not. Complainant further contends that Respondent allows visitors to communicate on the website via Crisp Chatbot and leads visitors to WhatsApp for further communications. Complainant provides, in its Additional Submission per the Panel's request, screenshots of the disputed domain name's resolving website showing the above.

 

The Panel finds from the screenshots that the disputed domain name's resolving website offers competing and unauthorized legal services by prominently displaying Complainant's logo mark. 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 hipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) ("The resolving webpages between Complainant's and Respondent's websites are virtually the same. Respondent's use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii)."); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) ("Respondent's use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant's [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)."). The Panel therefore finds Respondent is not using the disputed domain name 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 name.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the disputed domain name in bad faith. Complainant contends that i) Respondent registered the disputed domain name without a bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant's well-known DENTONS mark; ii) Respondent allows visitors to communicate on the website via Crisp Chatbot and leads visitors to WhatsApp for further communications; iii) the disputed domain name seeks to exploit Complainant's good will in its DENTONS mark and confuse consumers into believing that Respondent and its purported services are or are affiliated with Complainant when they are not; and iv) Respondent's use and registration of the disputed domain name disrupts Complainant's business by depriving it of the right to host a website at the disputed domain name to promote its services to the public. 

 

Under Policy ¶¶ 4(b)(iii) and (iv), offering competing and unauthorized goods for sale in disruption of a complainant's business while attracting users for commercial gain is evidence of bad faith registration and use. See Guess? IP Holder L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant's connection with the website by selling counterfeit products). The Panel recalls that Complainant has provided screenshots of the disputed domain name's resolving website, which offers competing and unauthorized legal services by prominently displaying Complainant's logo mark and images. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Additionally, Complainant argues that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant's rights in the DENTONS mark given Complainant's widespread use and registration of the DENTONS mark. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant's trademark rights is sufficient to establish bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) ("[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration."). The Panel infers, due to the notoriety of Complainant's DENTONS mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant's rights in the DENTONS mark at the time of registering the disputed domain name, and thus it finds Respondent's bad faith registration of the disputed domain name pursuant to Policy ¶ 4(a)(iii).

 

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 <dentons-sg.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 29, 2024