Two Chinese former partners that acquired the domains 0456.com and 9527.com ended up battling for them via the UDRP process.
The case involves the following claims:
- Complainant was the registrant and user of the disputed domain names, Complainant and Respondent were partners in business. That partnership dissolved, and Respondent seized registration of the disputed domain names without consent from Complainant. As a result, Respondent has no rights or legitimate interests in the disputed domain names.
- Respondent notes that Complainant has only applied for, but not obtained, official trademark registrations for the 0456.COM and 9527.COM marks. Thus, Complainant has no rights in or legitimate claim to the disputed domain names. Complainant and Respondent were business partners, but that relationship has expired. Thereafter, Respondent requested that Complainant allow Respondent to manage and register the disputed domain names, but Complainant refused that request. However, Respondent gained registration of the disputed domain names and, because those names have a degree of popularity within business circles, Respondent uses the names properly and reasonably.
Some stats on the domains’ PPC performance and web traffic were included as part of the UDRP decision:
The brief jottings found by the Panel in said Complaint Annex assert that Complainant has used the disputed domain names, <0456.com> and <9527.com>, in commerce since December 2018 and October 2018, respectively. Moreover, within its period of operation, Complainant’s use of <0456.com> generated revenue of $3,000 with an estimated $1,500 spent on advertising.; <9527.com> generated $2,000 with about $1,000 in advertising. Internet users visiting the websites are asserted to be approximately 300 per month for <0456.com> and 200 per month for <9527.com>.
The request to transfer the domains to the Complainant was denied, as the sole panelist at the Forum (NAF) did not find that the domains match an existing mark.
The domain transfer was denied.
Xiaoqiang Li v. Linfang Dou
Claim Number: FA2201001982516
PARTIES
Complainant is Xiaoqiang Li (“Complainant”), China. Respondent is Linfang Dou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <0456.com> and <9527.com>, registered with GoDaddy.com, LLC.
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on January 30, 2022; the Forum received payment on January 30, 2022.
On January 31, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <0456.com> and <9527.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2022 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@0456.com, postmaster@9527.com. Also on February 3, 2022, 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 February 7, 2022.
On February 14, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
RELIEF SOUGHT
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
– Complainant has pending trademark applications for the marks, 0456.COM and 9527.COM. Moreover, Complainant is the previous registrant of the disputed domain names, <0456.com> and <9527.com>.
– While Complainant was the registrant and user of the disputed domain names, Complainant and Respondent were partners in business. That partnership dissolved, and Respondent seized registration of the disputed domain names without consent from Complainant. As a result, Respondent has no rights or legitimate interests in the disputed domain names.
– Since Respondent began to use the disputed domain names improperly, it is clear that Respondent registered and is using the disputed domain names in bad faith.
B. Respondent
– Complainant has only applied for, but not obtained, official trademark registrations for the 0456.COM and 9527.COM marks. Thus, Complainant has no rights in or legitimate claim to the disputed domain names.
– Complainant and Respondent were business partners, but that relationship has expired. Thereafter, Respondent requested that Complainant allow Respondent to manage and register the disputed domain names, but Complainant refused that request. However, Respondent gained registration of the disputed domain names and, because those names have a degree of popularity within business circles, Respondent uses the names properly and reasonably.
– Having obtained registration of the disputed domain names only because the business relationship with Complainant had expired, Respondent did not register and has not used the names in bad faith, or to tarnish any trademark.
FINDINGS
Complainant and Respondent had a previous business partnership during which Complainant registered and administered services under the disputed domain names, <0456.com> and <9527.com>. That partnership terminated and Respondent obtained registration of the disputed domain names without the consent of Complainant. Meanwhile Complainant has filed trademark registration applications for the marks 0456.COM and 9527.COM.
The disputed domain name, <0456.com>, was created on February 10, 2000; and the disputed domain name, <9527.com>, was created on June 25, 2003.
DISCUSSION
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.
Identical and/or Confusingly Similar
To prevail under Policy ¶ 4(a)(i), Complainant must prove that it owns valid trademark or service mark rights in marks to which Complainant contends the disputed domain names are identical or confusingly similar. As evidence of such rights, Complainant asserts that it has pending trademark applications for the marks 0456.COM and 9527.COM. However, the Panel notes that the consensus among prior Policy panels is that mere pending trademark filings fail to constitute ownership of a mark for the purposes of Policy ¶ 4(a)(i). See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC., FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”).
Previous UDRP panels have found that the Policy does recognize sufficient rights in a trademark or service mark if a complainant can establish that it has common law rights in that mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also U.S. Environmental Protection Agency v. Domain Admin., FA 1722962 (Forum Apr. 26, 2017) (“Rights may be shown by persuasive evidence of common law trademark rights in a mark.”).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.3, provides guidance to Policy panels on what evidence is relevant in assessing a claim to common law trademark rights, as follows:
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
No explicit contention of common law trademark rights is stated within the Complaint, but the Panel, in examining Annex A attached thereto, will consider whether Complainant can possibly sustain a claim in this context. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”).
The brief jottings found by the Panel in said Complaint Annex assert that Complainant has used the disputed domain names, <0456.com> and <9527.com>, in commerce since December 2018 and October 2018, respectively. Moreover, within its period of operation, Complainant’s use of <0456.com> generated revenue of $3,000 with an estimated $1,500 spent on advertising.; <9527.com> generated $2,000 with about $1,000 in advertising. Internet users visiting the websites are asserted to be approximately 300 per month for <0456.com> and 200 per month for <9527.com>.
In evaluating this sparse data, the Panel concludes that the relatively meager revenues and advertising expenditures, together with the about 10 website visits or less per day within the relatively short (approximately four years each) periods of operation, do not come close to constituting the substantial body of evidence necessary to sustain a finding that Complainant possesses common law trademark rights in either of the claimed marks. In reaching this conclusion, the Panel is also mindful that Complainant bears the burden of proof with respect to this element required under the Policy.
Accordingly, the Panel finds that Complainant has failed to demonstrate that the disputed domain names are identical or confusing to a trademark or service mark in which Complainant has rights.
Rights or Legitimate Interests
As Complainant has not prevailed with respect to Policy ¶ 4(a)(i), the Panel will not make a finding with respect to this element required under the Policy. See Wasatch Shutter Design v. Duane Howell, FA 1731056 (Forum June 23, 2017) (“…since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.”); sea also Netsertive, Inc. v. Ryan Howard., FA 1721637 (Forum Apr. 17, 2017).
Registration and Use in Bad Faith
As Complainant has not prevailed with respect to Policy ¶ 4(a)(i), the Panel will not render a finding with respect to this element required under the Policy. See Wasatch Shutter Design v. Duane Howell, supra.; see also Netsertive, Inc. v. Ryan Howard, supra.
DECISION
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 <0456.com> and <9527.com> domain names REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: February 25, 2022
