The RCS Network v. zhouliang liang / zhou liang liang
Claim Number: FA2001001878988
Complainant is The RCS Network (“Complainant”), represented by Frank N. Gaeta of Rich May, P.C., Massachusetts, United States. Respondent is zhouliang liang / zhou liang liang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westernmasssaves.com>, registered with Xin Net Technology Corporation.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2020; the Forum received payment on January 15, 2020. The Complaint was submitted in both Chinese and English.
On January 22, 2020, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <westernmasssaves.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2020 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 January 24, 2020, the Chinese 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, the Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
The Panelist has noted that the registration language is Chinese but since the Complaint has been filed in both English and Chinese determines under Rule 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and in the absence of a Response that the remainder of the proceedings may be conducted in English.
Further, the Panelist finds that the Forum has discharged its responsibility under Rule 2(a) "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, the 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 name be transferred from Respondent to Complainant.
Complainant asserts trademark rights MASS SAVE and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is an unincorporated association of Massachusetts utility companies and energy efficiency services providers;
2. Complainant uses the trademark MASS SAVE in connection with marketing and educational services pertaining to the promotion of energy management and efficiency through consumer and contractor education;
3. the trademark MASS SAVE is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,136,287 registered on August 29, 2006; and
4. the domain name was registered on November 3, 2019 and resolves to a Chinese language portal style webpage which appears to provide links to adult entertainment and/or services.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Whilst the Panelist notes Complainant’s assertion that it “has been continuously using its MASS SAVE trademark to promote energy management and efficiency since 2004”, there is no proof of unregistered (common law) trademark rights. Nonetheless, it is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] Complainant provides evidence of a USPTO registration for the trademark and so the Panel finds that Complainant has rights in the trademark.
The critical issue in these proceedings is whether the disputed domain name is confusingly similar to the trademark. The Panelist observes that the USPTO registration carries a disclaimer of exclusivity in the term “mass”. Coupled with that disclaimer is the inherently low distinctive value of the word, “saves”. In its own words, Complainant provides that explanation that:
“The word MASS in the trademark refers to Massachusetts, the state where the Complainant is located and whose residents it serves. The word SAVE in the trademark refers to the energy saving services and benefits that Complainant promotes.”
The Panelist finds that however the trademark may be interpreted, whether the term “mass” in misunderstood as the abbreviation of the State of Massachusetts, or as a synonym for “large” or “bulk”, the trademark taken as a whole is not highly distinctive. Further, as stated already, there is no proof of acquired distinctiveness through public use.
The fact that the disputed domain name takes the trademark is not, in these circumstances, determinative of confusion. That is especially so here where the trademark has been appended to the word “western”, a term which does not naturally ‘read onto’ the trademark or in some other way preserve the integrity of the trademark. On the contrary, the Panelist finds that addition of the word “western-” to the trademark produces a combined term of no clear suggestiveness, nor one confusingly similar to the trademark.
It follows that the Panelist finds that the Complainant has not established the first element of the Policy.
No findings required.[ii]
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <westernmasssaves.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: February 22, 2020
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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