668 North, LLC v. Junyun Bi
Claim Number: FA1711001759137
Complainant is 668 North, LLC (“Complainant”), represented by James Colyer, Arizona, USA. Respondent is Junyun Bi (“Respondent”), Chicago, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phoenixchineseculturalcenter.com>, registered with 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2017; the Forum received payment on November 17, 2017.
On November 20, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <phoenixchineseculturalcenter.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the 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 November 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 2017 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 email@example.com. Also on November 20, 2017, 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 December 11, 2017.
On December 18, 2017, Complainant submitted a timely additional submission; and on December 24, 2017, Respondent submitted a timely additional submission.
On December 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, 668 North, LLC, claims rights in the CHINESE CULTURAL CENTER mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,474,623, registered July 31, 2001). Complainant further asserts common law rights in the CHINESE CULTURAL CENTER mark. Complainant claims that its mark has acquired secondary meaning through extensive, long-term use.
Respondent’s <phoenixchineseculturalcenter.com> domain name is confusingly similar to Complainant’s mark as it contains the entirety of Complainant’s mark with the addition of the geographically descriptive “phoenix” term.
Respondent, Junyun Bi, has no rights or legitimate interests in the <phoenixchineseculturalcenter.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. The domain name resolves to a website using Complainant’s mark to collect money for Respondent’s cause.
Respondent registered and uses the <phoenixchineseculturalcenter.com> domain name in bad faith. Respondent uses Complainant’s mark to attract visitors to its site to collect funds. Respondent had constructive notice and actual knowledge of Complainant’s rights in the CHINESE CULTURAL CENTER mark prior to registration of the disputed domain name. Respondent used a domain privacy service to shield Respondent’s identity from the public WHOIS records.
Complainant is owned by True North Companies, a private equity firm based in Scottsdale, Arizona. True North is currently involved in a number of legal disputes in Arizona state and federal court relating to its attempt to destroy a cultural and religious center beloved by the Phoenix Chinese community (referred to herein as the “Phoenix Chinese Cultural Center”). True North has taken a number of steps to remove various Chinese cultural elements from the Phoenix Chinese Cultural Center, including its roofline constructed using traditional craftsmanship.
Respondent, a supporter of the Phoenix Chinese community, developed a website hosted at <phoenixchineseculturalcenter.com> dedicated to opposing Complainant’s actions. Respondent is using the domain name to mobilize visitors to take action to save the architecture of the Phoenix Chinese Cultural Center, by educating the public about Complainant’s activities and by encouraging visitors to sign a petition to save the iconic pieces of Chinese culture and make donations to a third party registered charity.
Complainant’s registration for CHINESE CULTURAL CENTER is on the Supplemental Register because the USPTO issued a final office action finding that the mark is wholly descriptive.
Complainant does not have any enforceable trademark rights in the mark. The mark is inherently descriptive and Complainant has not met its burden to prove secondary meaning.
If Complainant has any rights in the CHINESE CULTURAL CENTER mark, they are not exclusive.
Any trademark rights in the mark have been abandoned.
Respondent has legitimate interests in the <phoenixchineseculturalcenter.com> domain name as it utilizes the domain name to operate a non-commercial criticism website.
Respondent has not registered or used the <phoenixchineseculturalcenter.com> domain name in bad faith. Respondent’s solicitation of donations is not bad faith under Policy ¶ 4(b)(iv).
The website hosted at the disputed domain name is clearly critical of Complainant. No reasonable visitor to the website would believe that it was operated by Complainant.
Complainant attempts to use reverse domain name hijacking to gain control over the disputed domain name.
C. Complainant’s Additional Submissions
Respondent fails to articulate why another, less confusing, domain could not be used. It is not necessary to take Complainant’s trademark and use it as part of the domain name. Respondent’s use of Complainant’s mark is so pervasive that confusion will likely lead to members of the public donating funds to Respondent believing that they are donating funds to Complainant.
In addition to the rights afforded by its registration on the Supplemental Register, Complainant has established common law trademark rights in its CHINESE CULTURAL CENTER mark by virtue its longstanding use of the mark in connection with its office suite and leasing services. Complainant registered its mark on the Supplemental Register on July 31, 2001. Respondent registered its domain name 16 years later, on September 18, 2017. Between the date of registration and the date the domain was registered, there was a transition from descriptive to distinctive. Specifically, Complainant’s mark has been used continuously for over 20 years and has since acquired distinctiveness. Complainant’s services have come to be identified by Complainant’s mark. Accordingly, Complainant has trademark rights for purposes of ¶ 4(a)(i) of the Policy.
The allegations made by Respondent regarding Complainant’s cessation of use of the mark are inaccurate.
Respondent is using Complainant’s mark to divert users seeking Complainant’s services to its own website for commercial gain by soliciting donations from consumers who might believe Respondent is affiliated with Complainant. Such use does not represent 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).
By using Complainant’s mark in the domain name to attract visitors to sign a petition and make donations to Respondent, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on its website in violation of Policy ¶ 4(b)(iv).
Complainant has not engaged in reverse domain hijacking, but rather is merely seeking to vigorously protect its intellectual property rights in a longstanding registered mark.
D. Respondent’s Additional Submissions
In its additional submission, Complainant has conceded that neither it, nor its predecessor, has used the mark in any meaningful way. The use of the trademark does not create any exclusive rights in its constituent parts, particularly where those parts are descriptive and have been expressly disclaimed as such.
Complainant or its predecessor has a registration on the USPTO’s
principal register for COFCO CHINESE CULTURAL CENTER, in which all exclusive rights to the words “CHINESE CULTURAL CENTER” have been disclaimed due to their descriptive nature.
The “initial interest confusion” doctrine does not apply given that Complainant lacks any protectable rights in the mark and the doctrine is inapplicable to domain names being used for legitimate, protected speech.
Complainant is a private equity firm that has no known record of soliciting donations. Respondent’s website is, as part of its non-commercial, First-Amendment-protected speech against Complainant’s activities, soliciting donations to an actual charity. It is clear that Respondent’s website is not affiliated with Complainant.
The beneficiary of donations is the Chinese United Association of Greater Phoenix, which gofundme identifies as a Certified Charity. Respondent’s solicitation of donations in this context is plainly not commercial in nature.
Complainant’s CHINESE CULTURAL CENTER mark was registered on July 31, 2001, with the USPTO on the Supplemental Register (Reg. No. 2,474,623).
On June 17, 2017, Complainant purchased the CHINESE CULTURAL CENTER office building located in Phoenix, Arizona. Complainant also acquired all intellectual property rights in the mark CHINESE CULTURAL CENTER. The mark CHINESE CULTURAL CENTER has been used in promotion of office suite and leasing services.
Respondent registered the <phoenixchineseculturalcenter.com> domain name on September 18, 2017, approximately three (3) months after Complainant purchased the CHINESE CULTURAL CENTER office building.
Respondent is using the domain name to save the architecture of the Phoenix Chinese Cultural Center, by educating the public about Complainant’s activities and by encouraging visitors to sign a petition to save the iconic pieces of Chinese culture and make donations to a third party registered charity.
Complainant does not have protectable rights in the CHINESE CULTURAL CENTER mark either from registration on the Supplemental Register or from establishment of common law rights. Complainant’s mark has not acquired distinctiveness or secondary meaning.
Respondent has rights or legitimate interests in the <phoenixchineseculturalcenter.com> domain name. Respondent makes a non-commercial or fair use of the domain name.
Respondent has not registered and or used the <phoenixchineseculturalcenter.com> domain name in bad faith.
Complainant has acted in bad faith and engaged in reverse domain name hijacking by initiating this proceeding.
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.
Respondent asserts Complainant has no registration-based rights in the CHINESE CULTURAL CENTER mark as Complainant relies on a Supplemental Registration of the mark to establish rights. Respondent also contends Complainant has no common law rights in the CHINESE CULTURAL CENTER mark as Complainant has not shown secondary meaning in the mark. As Complainant has failed to show that its CHINESE CULTURAL CENTER mark has acquired distinctiveness or secondary meaning, Complainant does not have protectable registration-based or common law rights in the mark under Policy ¶ 4(a)(i).
In order to satisfy Paragraph 4(a)(i) of the Policy for a trademark registered on the Supplemental Register, a complainant must show that the mark has acquired distinctiveness. Integrated Print Solutions, Inc. v. Kelly Davidson and Integrated Print Solutions, D2013-0219 (WIPO Apr. 2, 2013). In Integrated Print Solutions, Inc., the Panel concluded:
It is well accepted that fanciful, arbitrary, and suggestive marks (or inherently distinctive marks) are registrable on the Principal Register. Conversely, marks that are merely descriptive and lacking a showing of acquired distinctiveness may only be registered on the Supplemental Register. USPTO, Trademark Manual of Examining Procedure (TMEP) § 1209.01. Unlike registration on the Principal Register, registration on the Supplemental Register creates neither a presumption of the registrant’s exclusive right to use the mark, nor a presumption of validity. McCarthy on Trademarks, 4th Edition, §19: 36. Supplemental Registration is evidence of nothing except that the registration actually issued. , 200 U.S.P.Q. 470 (T.T.A.B. 1978). Registration of an application on the Supplemental Register is an implied admission that the term is descriptive. McCarthy on Trademarks, 4th Edition, §19: 43.
To show distinctiveness, the purported trademark owner must show “substantially exclusive and continuous use” of a designation “as a mark” for the five years before the date on which the claim of distinctiveness is made”. 15 U.S.C. 1052(f); see also TMEP 1212.05(b) (“the use of the mark during the five years must be continuous, without a period of “nonuse” or suspension of trade in the goods or services in connection with which the mark is used”) and (c) (“The substantially exclusive and continuous use must be “as a mark.”).
Secondary meaning is acquired when “in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.” AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009).
Complainant has failed to show acquired distinctiveness through secondary meaning, having failed to provide evidence of substantial or exclusive use. Complainant has not shown that the public identifies the provision of office suite or leasing services with the mark. See Newman and Denney P.C. v. David Schorr, FA 1643577 (Forum Dec. 28, 2015) (“Proof of secondary meaning generally requires evidence of use, sales, advertising, or similar methods of communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the goods or services to which the mark is affixed.”).
Respondent has shown a myriad competing uses of the mark from a web search which show universal recognition that the mark is descriptive and that Complainant’s use of the mark is not “substantially exclusive”. See e.g., LeBoeuf Corporation v. DOMAIN ADMIN, FA 1655243 (Forum Feb 11, 2016) (finding that the complainant lacked common law rights to the LEBOEUF mark because it is a common and generic term and the respondent showed many other descriptive uses of the term on the Internet and finding that Complainant had committed reverse domain name hijacking); see also Graça Artes Gráficas E Editora Ltda. v. Domain Amin, D2011-0734 (WIPO July 18, 2011) (finding that the complainant’s marks, which were granted with disclaimers and comprised generic and descriptive terms, were insufficient to establish rights under the Policy, and that Complainant had committed reverse domain name hijacking); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding that Paragraph 4(a)(i) of the Policy was not satisfied because the complainant’s trademark “USA CASH SERVICES”, which was registered on the Supplemental Register with a disclaimer of the “cash services” component, was highly descriptive (and that the USA component to be descriptive as well) where the complainant failed to provide any declarations of unaffiliated parties attesting that the mark of the complainant served as an identifier of origin of services).
Complainant has failed to show substantial and exclusive use of the mark. Therefore, Complainant has failed to show acquired distinctiveness or secondary meaning within the mark so as to have protectable rights under Policy ¶ 4(a)(i) through the registration on the Supplemental Register or through proof of common law rights.
Furthermore, Complainant’s predecessor abandoned any trademark rights in the CHINESE CULTURAL CENTER mark. A mark shall be deemed to be abandoned . . . when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. 15 U.S.C. § 1127. More than three years have passed between Complainant’s cessation of use of the mark and Complainant’s filing of the Complaint. The most recent evidence of use of the mark proffered by Complainant dates back to 2011.
Complainant has failed to show registration-based rights or common law rights in the CHINESE CULTURAL CENTER mark under of Policy ¶ 4(a)(i).
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Respondent makes a legitimate noncommercial or fair use of the <phoenixchineseculturalcenter.com> domain name. Use of a disputed domain name to provide information in a non-competitive manner can be a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding that the respondent had rights or legitimate interests in the <oexstreet.com> domain name because its use of the complainant’s OEX mark to provide information on the complainant’s Options Exchange and not to compete with the complainant was a nominative use). Respondent’s <phoenixchineseculturalcenter.com> domain name is used to mobilize visitors to take action to save the architecture of the Phoenix Chinese Cultural Center by urging visitors to sign a petition to local and state government officials and make donations to a third-party registered charity. Respondent does not use the domain name to compete with Complainant.
“The use of a domain name to criticize a company is prima facie fair use.” Shell International Petroleum Company Limited v. Alfred Donovan, D2005-0538 (WIPO Aug. 8, 2005). Operation of a non-commercial criticism website is classic fair use under UDRP decisions where the parties and registrar are located in the United States. See, e.g., Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008).
Respondent’s solicitation of donations to a third party charitable site does not make the use commercial. See Ellen G. White Estate, Inc. v. Cary Mayo c/o Calvary Community Church, FA 1076568 (Forum Nov. 2, 2007) (declining to find the solicitation of direct donations to be commercial use); see also Covance, Inc. et al. v. The Covance Campaign, D2004-0206 (WIPO Apr. 30, 2004) (finding that solicitations of direct donations on a complaint website to non-commercial and “merely ancillary to the Respondent’s main purpose which is to criticize the Complainants’ activities”).
Because Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii), Respondent cannot be found to have registered or used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <phoenixchineseculturalcenter.com> domain name, of its rights to use the disputed domain name. Respondent asserts Complainant knew the CHINESE CULTURAL CENTER mark was found to be descriptive by the USPTO and only qualified for the Supplemental Register.
Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and is using the domain name in bad faith. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Complainant knew or should have known that it could not succeed as to any of the required three elements. WIPO Jurisprudential Overview 3.0 at 4.16. The Panel finds that the Complaint was brought in bad faith and that the Complaint constitutes an abuse of the administrative proceeding. Therefore, Complainant engaged in reverse domain name hijacking by initiating this proceeding.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <phoenixchineseculturalcenter.com> domain name REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 27, 2017
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