The domain name Instapaint.com was registered in 2012, providing services that recreate photographs as an oil painting.
The registrant, Albert Cheng, indicated that the domain was registered in 2009:
“if you check my domain history, my domain was registered on 2/1/2009. the litigants was registered 4 years after mine. I had already been using the name in commerce for a custom painting business. had i made significant revenues with my business i would have been able to afford a legal team to defend my trademark, however this was out of reach for me. the litigant lied to the USPTO about when they started their business and was able to use fancy lawyers to steal my trademark. its clear that the person wanted my name from the start, instapaint.com is a premium domain name and business brand. instapainting.com is a garbage domain name with low value and due to obtaining VC funds to grow his brand, he was able to make a bunch of money and hire lawyers to steal my brand. the concept is similar to facebook.com. imagine them starting with the word facebooking.com. clearly, they wouldnt. the owner of instapainting.com wanted my name from the start of his brand and has used legal maneuvering to steal my mark and destroy my business growth. Thanks, Michael Navarini.”
The Respondent’s INSTAPAINT brand went through adventures of its own: After being registered in 2016, it was canceled in 2021 after the Complainant successfully filed an opposition in 2019. As with the UDRP, they claimed rights to the mark INSTAPAINTING. It’s interesting to note that the Respondent’s mark was opposed at some point by Instagram but there was no further action.
The Forum (NAF) panelist took into account the Complainant’s assertions that the domain was acquired by the Respondent in 2017:
Complainant’s information and belief, the domain name was acquired by Respondent in 2017, which is after Complainant acquired its common law trademark. The Panel’s view is that the domain name was probably first registered, although not by Respondent, on or about January 5, 2009 and Respondent acquired it several years later, probably in June 2017.
Final decision: Grant transfer of the domain to the Complainant.
Like.fm, Inc. v. Albert Cheng
Claim Number: FA2205001994826
PARTIES
Complainant is Like.fm, Inc. (“Complainant”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA. Respondent is Albert Cheng (“Respondent”), represented by Michael Navarini, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with GoDaddy Online Services Cayman Islands Ltd.
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.
The Honorable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on May 3, 2022; the Forum received payment on May 3, 2022.
On May 4, 2022, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to the Forum that the domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. 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 May 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@instapaint.com. Also on May 9, 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.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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. 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 a formal Response from Respondent but taking into account, as far as it is possible to do so, representations to the Forum purporting to be from and/or on behalf of Respondent.
In that regard, the Panel notes that on June 13, 2022 it issued Procedural Order No.1 to the parties, inviting Complainant to provide evidence relating to when Respondent acquired the disputed domain name and inviting Respondent to provide evidence relating to his business conducted under the disputed domain name, the date when he first acquired the domain name and the respective interests held in the domain name held by Albert Cheng and Michael Navarini and providing for responses to be provided to the Panel and the Parties by June 20,2022 and for replies from each party to the submissions of the opposing party by June 23, 2022.Complainant replied to the Procedural Order and its reply will be referred to in this decision. Respondent did not reply to the Procedural Order or to Complainant’s submissions.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
(1) Complainant made the following contentions in the Complaint.
Complainant is a Washington-based company engaged in the business of providing custom-made painting services by means of a web-based process that allows users to upload a photograph that is then used as the basis for a derivative painting. Complainant claims that it has common law rights in the INSTAPAINTING trademark. Complainant has also made application to the USPTO for a registered trademark for INSTAPAINTING. Complainant submits that Respondent’s domain name is identical or confusingly similar to Complainant’s INSTAPAINTING mark because it incorporates wholly the mark, only differing through the deletion of the “ing” portion of the mark and the addition of the “.com” generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INSTAPAINTING mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with making a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to offer services competing with those of Complainant, impinge on Complainant’s trademark, disrupt Complainant’s business, conduct a sham business and offer the domain name for sale to the public.
Respondent registered and uses the disputed domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the mark before it acquired the domain name. The disputed domain name was also registered with the primary intention of disrupting Complainant’s business.
(2) Complainant made the following further contentions in response to the Panel’s Procedural Order No. 1.
Complainant contends that its submission in the Complaint that “in early 2017 the Respondent acquired the domain name…” is correct. In support of that contention, Complainant says that the WHOIS record for the domain name, which it put in evidence, shows that Respondent did not register the domain name on its creation date of April 9, 2012, but rather that:
(a) it was registered to DEWBLAZE LLC Kirubakaran Athmanathan in January 2012;
(b) the WHOIS then shows that from May 2013 to December 2016 it was registered to Johnny Gray for ArtWired, Inc;
(c) that from August 2013 to early 2017 it was either listed for sale or with parked pages; and that
(d) from June 2017 the first archived screenshots appear showing Respondent’s use of the INSTAPAINT with text allegedly copied from Complainant’s prior website.
B. Respondent
(1) Respondent did not file a formal Response to this proceeding. The Panel notes, however, that Respondent or a correspondent on behalf of Respondent wrote to the Forum via email on several occasions concerning this proceeding, namely:
(a) on May 10, 2022, stating “what exactly do i need to do? bottom line is i started instapaint.com years before they did (they stole my entire business model and the name), they just have a fancy law firm and got my trademark cancelled. Thanks. Mike”;
(b) on June 9, 2022 with no text, but what purports to be an image of a registered trademark at the USPTO for INSTAPAINT, for which the registrant of that trademark is said to be Michael Navarini and which was filed on June 18, 2015 and registered on May 10, 2016, designated “DEAD”; and
(c) on June 10, 2022 stating “Here are some facts for this case” and images for what purports to be the aforesaid “DEAD” trademark, a trademark for INSTAPAINTING purporting to have been filed by Complainant on February 3, 2019 and registered on May 24, 2022 and text ( that is to say, text of Respondent’s email of June 10, 2022,) stating : “My trademark for instapaint can be seen above. As you can see I had this trademark since 2016. The other party suing me (they own instapainting.com) got my mark cancelled on november 16, 2021 using a fancy legal team and tens of thousands of dollars in legal expenses to ILLEGALLY cancel my mark by LYING to the USPTO. I contacted several attorneys to help me defend the case and the cost was far too high to hire legal representation, considering my business was seeing limited revenue due to the litigant’s actions in trying to destroy my mark, and SEO ranking on google and other search engines. The UPSTO granted the litigant their mark even though my mark was STILL IN EXISTENCE and VALID during their application. Clearly, they did zero research into the name instapaint/instapainting to see that a business already had a mark doing custom paintings with that name. Here you can see the litigant’s trademark that they JUST obtained from the USPTO.”
That text is followed by further text stating:
“if you check my domain history, my domain was registered on 2/1/2009. the litigants was registered 4 years after mine. I had already been using the name in commerce for a custom painting business. had i made significant revenues with my business i would have been able to afford a legal team to defend my trademark, however this was out of reach for me. the litigant lied to the USPTO about when they started their business and was able to use fancy lawyers to steal my trademark. its clear that the person wanted my name from the start, instapaint.com is a premium domain name and business brand. instapainting.com is a garbage domain name with low value and due to obtaining VC funds to grow his brand, he was able to make a bunch of money and hire lawyers to steal my brand. the concept is similar to facebook.com. imagine them starting with the word facebooking.com. clearly, they wouldnt. the owner of instapainting.com wanted my name from the start of his brand and has used legal maneuvering to steal my mark and destroy my business growth. Thanks, Michael Navarini.”
(2) By the Panel’s Procedural Order No.1, it invited Respondent to provide evidence of the establishment of his business under the disputed domain name, the date on which he first acquired the disputed domain name, the interest held in the domain name by Albert Cheng and Michael Navgarini and related issues. However, as noted, Respondent did not reply to the Procedural Order.
FINDINGS
1.Complainant is a United States company engaged in the business of providing custom-made painting services by means of a web-based process that allows users to upload a photograph that is then used as the basis for a derivative painting.
2. Complainant has established its common law trademark rights to INSTPAINTING and that it acquired those rights in or about January 2014 when Cheng (Chris) Chen, Founder and President of Complainant, DBA Instapainting, acquired the domain name and launched the INSTAPAINTING™ branded website, creating custom paintings from photographs and promoted the INSTAPAINTING mark on the internet.
3. The disputed domain name, was registered on or about January 5, 2009 and Respondent acquired ownership of or rights in the domain name in or about June 2017.
4. Respondent has used the domain name to offer services competing with those of Complainant, impinge on Complainant’s trademark, disrupt Complainant’s business, run a sham business, and offer the domain name for sale to Complainant and the public at large.
5. The disputed domain name is confusingly similar to the INSTAPAINTING mark of Complainant.
6. The evidence shows on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name.
7. The evidence shows on the balance of probabilities that Respondent registered and used the disputed domain name 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 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 dealing with those issues, the Panel notes that Respondent did not file a formal Response. However, the nature of its email communications is such that the Panel will treat their contents as a Response. The Panel has given careful attention to those communications and the representations of Respondent contained in them.
As already noted, Complainant replied to the Procedural Order and the Panel will take those representations into account.
Respondent did not reply to the Panel’s Procedural Order No.1 or Complainant’s reply to the Order, notice of which was given to Respondent.
In other words, when deciding the issues, the Panel will take into account all of the material put to it by the parties.
Identical and/or Confusingly Similar
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. At the time the Complaint was filed, Complainant had applied for registration of the INSTAPAINTING mark, but no registration had been granted. It therefore did not have a registered trademark at the time the Complaint was filed. It appears that since the Complaint was filed, Complainant has obtained a registered trademark from the USPTO for INSTAPAINTING and in fact that this trademark was registered on May 24, 2022. However, Complainant still has to prove that when the Complaint was filed it had a trademark on which it may rely in this proceeding. That is because the Policy requires Complainant to show that it “has” a trademark, which is generally interpreted to mean that it has a trademark at the time the Complaint is filed. Complainant submits that it has common law rights in the INSTAPAINTING mark and that it had them when the Complaint was filed. A Complainant in such a position as the Complainant in this proceeding may claim and demonstrate common law rights despite a lack of registration with a trademark agency, but it must prove those rights. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”)
Complainant claims common law rights in INSTAPAINTING because that expression has allegedly acquired a secondary meaning that establishes those rights in Complainant. In other words, it claims a secondary meaning to the effect that the expression identifies Complainant as the source of the goods and services provided under the mark. Where a Complainant establishes secondary meaning the Panel may find that it has common law rights in a mark. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
The Panel finds that Complainant has provided evidence of a secondary meaning of INSTAPAINTING, including a declaration from Cheng (Chris) Chen outlining various activities and financial figures for the business operated under the mark, media and public recognition through social media posts and press coverage. See Compl. Annexes 1 – 3. Complainant’s counsel has clearly put a lot of time and effort into collecting the evidence that has been used to demonstrate this issue, which it does. That evidence is extensive and of good quality. The Panel is therefore satisfied that a secondary meaning associates Complainant as the source of the goods and services provided under the mark. The Panel therefore finds on the basis of that evidence that Complainant has common law rights in the INSTAPAINTING mark pursuant to Policy ¶ 4(a)(i).
As to when those rights arose, the only evidence is from Complainant and that evidence includes the declaration by Cheng (Chris) Chen to the effect that the Complainant company of which he is the Founder and President acquired its common law trademark rights to INSTAPAINTING in January 2014. The company clearly traded under and acquired success under the trademark INSTAPAINTING from around that time and subsequently. This dispute has also included proceedings before the Trademark Trial and Appeal Board of the USPTO which concluded that Complainant acquired its trademark rights in INSTAPAINTING on or about January 1, 2014. On all the evidence made available to the Panel, it finds that Complainant acquired its common law trademark rights in INSTAPAINTING on or about January 1, 2014.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s INSTAPAINTING mark. Complainant argues that Respondent’s domain name is confusingly similar to the mark because it incorporates the mark, differing only through the deletion of the letters “ing” in the trademark before adding the “.com” gTLD. The addition or deletion of a generic or descriptive phrase and a gTLD generally fails to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i) so as to negate any confusing similarity between the domain name and the trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Guidance of that sort from prior UDRP decisions is of course useful. But in the final analysis, each case depends on its own facts and a panel must decide on the facts before it whether the domain name is confusingly similar to the trademark in question.
In the present case, the two are clearly similar, for they both contain the term “instapaint”. They are also, in the opinion of the Panel, confusingly so, as an objective observer, looking at them, may well think they are so close that the domain name may be an abbreviation of the trademark, an attempt to compress it, related to it or even copied from it. Here, it should also be said that because of the way the test is expressed in the Policy, what is required is a straight comparison of the two, the domain name and the trademark, without regard to other facts that may become relevant when dealing with other provisions of the Policy but which are not relevant on the present issue.
Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i) and Complainant has thus made out the first of the three elements that it must establish.
The Panel notes here Complainant’s argument about the relevant date when Respondent registered the domain name. This issue is important and may as well be dealt with here, as it will largely determine the subsequent question of whether Respondent registered, as well as used, the domain name in bad faith. It is generally understood that a complainant will have difficulty proving registration of a domain name in bad faith under the UDRP, although not under all domain name policies, if the domain name was registered before the complainant’s trademark rights were acquired. That is because if there were no trademark on foot at the time, the registrant of the domain name could hardly have been motivated by bad faith directed at a trademark or its owner if there were no trademark on foot when it registered the domain name. Under Policy ¶ 4(a)(i), past panels have found that the relevant date for conducting disputed domain name analyses is not necessarily when the disputed domain name was registered, but when Respondent acquired ownership or rights in the disputed domain name. The Panel as presently constituted is of the view that that approach is correct. Also, see Golden Krust Patties, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1778134 (Forum May 4, 2018) (holding that “the date a respondent obtains ownership of a domain name, not the date of the initial registration of the domain name, is the relevant date for a Policy ¶ 4(a)(i) analysis.”).
The Panel notes Complainant’s argument that while the disputed domain name was first registered in 2012, (although the Registrar’s verification says that it was registered on January 5, 2009, the WHOIS record tendered by Complainant also says it was on January 5, 2009 and Respondent says it registered the domain name on “2/1/2009”) on Complainant’s information and belief, the domain name was acquired by Respondent in 2017, which is after Complainant acquired its common law trademark. The Panel’s view is that the domain name was probably first registered, although not by Respondent, on or about January 5, 2009 and Respondent acquired it several years later, probably in June 2017.
To resolve this issue, and also to ensure that Respondent had an opportunity to present all of its case in accordance with Rule 10(b), the Panel issued Procedural Order No.1 inviting each of the parties to submit further evidence.
Complainant was invited to submit evidence as follows:
“The Complainant is therefore invited to provide to the Panel all of the acts, facts, matters and circumstances that it relies on to show that “(o)n information and belief, some time in early 2017 the Respondent acquired the domain name (the “Disputed Domain”).”
Complainant replied to the Panel’s Order and its reply has been helpful and revealed factual material that has assisted the Panel in its deliberations. The principal points made by Complainant in that reply have been set out in the Contentions section of this decision, but for ease of reference it may be said here that Complainant contended that its submission in the Complaint that “in early 2017 the Respondent acquired the domain name…” was correct. In support of that contention, Complainant submits that the WHOIS record shows that Respondent did not register the domain name on its creation date of April 9, 2012, but rather that:
(e) it was originally registered to one or more unknown parties and then to DEWBLAZE LLC Kirubakaran Athmanathan in January 2012;
(f) the WHOIS then shows that from May 2013 to December 2016 it was registered to Johnny Gray for ArtWired, Inc;
(g) that from August 2013 to early 2017 it was either listed for sale or with parked pages; and that
(h) from June 2017 the first archived screenshots appear showing Respondent’s use of the INSTAPAINT mark and logo with text allegedly copied from Complainant’s prior website.
The Panel has examined this material in detail. There is probably no need to set it all out in detail. What is clear is that it is very dubious in the opinion of the Panel that Respondent was the registrant of the domain name on April 9, 2012 or on January 5, 2009. The record of the WHOIS shows that for the first few years of its life, no name is revealed as to who was the registrant. But then, as is shown and noted on November 28, 2011, January 7, 2012, April 11, 2012 and possibly at other times, it was registered to DEWBLAZE and that the next long term owner emerged on May 23, 2012. This was Johnny Gray of ArtWired who appears as the owner on the records of the WHOIS taken on May 21,2013, August 30, 2013, September 10, 2016, October 26, 2016 and December 31, 2016.
To pause there, the only conclusion that can be reached from that record is that Respondent was not the registrant at any time of which there is any evidence between 2009 and 2016. It should also be mentioned here that this period covered the time when Complainant acquired its common law trademark rights to INSTAPAINTING. And there is no evidence that Respondent registered the domain name either in or before 2014 when those trademark rights were acquired by Complainant.
It should also be noted again that the Panel asked Respondent in Procedural Order No.1 when he first acquired the domain name or any interest in it, but he did not reply.
To continue with the chronology, by February 17, 2017 the domain name was owned by a person protected for privacy as is shown by the record in the WHOIS for that date and through to May 5, 2022. On that date, the Register was able to state in response to the Forum that the registrant was Albert Cheng. It may well be significant that Albert Cheng’s email address was given as navarini.m@gmail.com.
As well as the historic WHOIS record, Complainant has tendered screenshots taken by the Wayback Machine at www.archive.org. The Panel can consider those records as they were included by Complainant in response to Procedural Order No.1 which , on its terms, enabled Respondent to see Complainant’s response and then to reply to those submission by June 23, 2022, which he did not do.
The screenshots show that for some time, while the domain name was owned by DEWBLAZE, it was used as a “personal blog about photography” and the screenshots show that this was so. There is no evidence at all that at that time Respondent had ownership or control of the domain name. As already seen, the domain name was then owned for several years by Johnny Gray of Art Wired and not by Respondent and it was then put up for sale by Sedo for several years.
However, the Respondent then clearly took a role with the domain name around the middle of 2017 and the Panel takes the view that on the evidence Respondent at this time acquired an interest either by himself or with associates in its ownership and control. It is noticeable and significant that from 2017 or thereabouts the domain name was used by Respondent to promote the services of Instapaint. This is seen from the Wayback Machine for June 16, 2017, July 17, 2017, August 15 and 20, 2017 and September 20, 2017.On those dates, the words and the image INSTAPAINT appear, not simply in the style of the wording of the domain name but in the same style as used in the logo for Respondent’s trademark for INSTAPAINT referred to above and cancelled after the proceedings before the USPTO tribunal. In other words, its was around the middle of 2017 that the Respondent started to use the domain name and the INSTAPAINT logo so as to promote the services offered under the disputed domain name, a domain name that the Panel finds is confusingly similar to Complainant’s trademark. There is no evidence that Respondent did this in 2009 or in 2012 or at any time before 2014 when Complainant acquired its trademark, giving rise to the probability that he did so because he had acquired the domain name at that time.
The Panel also notes that:
(a) the use of the domain name around the middle of 2017 carried the contact address for InstaPaint as1702A Street, Sparks, NV 89431;
(b) the address of Michael Navarini as the registered owner of the INSTAPAINT trademark was PO Box 971, Reno, Nevada 89504; and
(c) the email address of Albert Cheng, the named registrant of the domain name, was and is navarini.m@gmail.com.
That history thus seems on the balance of probabilities, to confirm that Respondent, whether under the name Albert Cheng or Michael Navarini was not the registrant of the domain name on January 5, 2009 when, on the Panel’s reading of the record, the domain name was first registered, or on “2/1/2009” as Respondent maintains, which dates were before Complainant acquired its common law trademark. Rather, it was probably the case that Respondent or interests associated with him started to use and had control of the domain name in or about the middle of 2017, which was of course several years after Complainant had acquired its trademark.
The Panel, in reaching these conclusions can only act on the evidence and what it appears to show and it has not been helped by the fact that Respondent has not replied to Procedural Order No. 1 the Complainant’s response to that order. The Panel’s conclusions are therefore those that the Panel reaches on the balance or probabilities of the evidence it has had before it.
Complainant has thus shown the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) By taking control of the domain name, Respondent has chosen to take Complainant’s INSTAPAINTING mark and to use it in its domain name, deleting only the letters “ing” of the trademark;
(b) Respondent acquired the disputed domain name in or about June of the year 2017;
(c) Respondent has used the domain name to offer services competing with those of Complainant, impinge on Complainant’s trademark, disrupt Complainant’s business, run a sham business and offer the domain name for sale to Complainant and to the public;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the INSTAPAINT mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the disputed domain name does not establish that Respondent is known by the disputed domain name, per Policy ¶ 4(c)(ii);. See WHOIS Information. Respondent is known as “Albert Cheng”. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and was not granted permission to use the domain name by Complainant, the domain name including, as it does, the most significant part of Complainant’s trademark
(f)Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use because it simply uses the goodwill associated with Complainant’s mark to benefit financially from competing services. Panels have held that usage of a complainant’s mark to benefit from the goodwill surrounding that mark and offer competing goods and services was not a bona fide offering of goods or services. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). Complainant provides screenshots of selected portions of the disputed domain name’s resolving website which Complainant shows offers a competing service connecting artists and buyers modeled after Complainant’s own business model. The screenshots show gift card advertisements and terms of service that Complainant has shown are copied from its own website. Compare Compl. Exs. 4 and 5 with Compl. p. 4 (showing links to access the portions of Complainant’s website it claims are copied). Therefore, as the Panel agrees with Complainant’s arguments , it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent does not use the domain name for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use because it offers the disputed domain for sale to the public. Panels have found that an offer for sale of a disputed domain is further evidence of a lack of rights and legitimate interest. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots of the disputed domain name advertised for sale online at for $99,999. The Panel therefore finds that Respondent is not making a bona fide offering of goods or services under ¶ 4(c)(i) nor a legitimate noncommercial or fair use under ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response it has not made a formal statement on this issue of whether he has a right or legitimate interest in the domain name. But the Panel has a good idea of his position from reading closely the various email communications he has sent to the Forum. He maintains that he established his business before Complainant established its business and that Complainant has wrongly taken steps to prevent him from operating his business under the domain name. The factual case alleged by Respondent has not been made out on the evidence and, on the balance of probabilities, the Panel does not accept it. Moreover, the Panel made a deliberate attempt to engage with Respondent by means of Procedural Order No.1 to ensure, as far as the Panel could do it, that he had ample opportunity to present his case. The Procedural Order No. 1 was phrased so that it could bring out Respondent’s version of events. But he did not reply to it. Nor did he reply to the responses given by Complainant to the questions put to it.
Accordingly, the Panel does not find evidence to supports Respondent’s case and all the evidence points to Respondent registering the domain name well after Complainant established its trademark and business and because of it.
Respondent has therefore not rebutted the prima facie case against it on this issue.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the domain name in bad faith because he is attempting to sell the disputed domain for profit. The Panel agrees. When a disputed domain name is registered with the primary intention of transferring it for a profit, Panels have found evidence of bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Complainant provides evidence of the offer of the domain name for sale online for $99,999. See Compl. Annex 6. The Panel therefore agrees that the disputed domain name was acquired with the primary intention that Respondent would be able to sell the domain name for a high price to Complainant and that Complainant would have to pay. That amounted to bad faith registration and, as Respondent held onto the domain name and continued to offer it for sale, it is also bad faith use pursuant to ¶ 4(b)(i).
Secondly, Complainant argues that Respondent registered and uses the domain name in bad faith because he is disrupting Complainant’s business and is attempting to attract Internet users to his competing website for commercial gain. Where the respondent uses a disputed domain name to disrupt the business of a complainant, a Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv).That is so in the present case. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). In that regard, the Panel notes Complainant’s submission that Respondent operates the disputed domain name’s resolving website in furtherance of a competing business, as well as Complainant’s screenshots of selected portions of the disputed domain name’s resolving website, which Complainant showed are copied from its own website. See Compl. Exs. 4 and 5. The evidence is consistent with Complainant’s submissions and the Panel so finds. The Panel therefore finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Thirdly, the Panel finds Respondent registered and uses the domain name in bad faith by passing itself off as Complainant online. Under Policy ¶¶ 4(b)(iii) and (iv), past panels have found bad faith disruption for commercial gain where a Respondent explicitly attempts to pass itself off as Complainant and/or implies an affiliation with Complainant online. That seems to be what Respondent has been doing. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). The Panel recalls Complainant’s screenshots of portions of the disputed domain name’s resolving website that copy Complainant’s own content on its website. See Compl. Ex. 4 and 5. Complainant has also shown that Respondent has taken out Google ads to promote the disputed domain name that have confused customers who thought they were purchasing services through Complainant’s own website. See Compl. Ex. 6. Therefore, as the Panel agrees and as there is no evidence to the contrary, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the INSTAPAINTING mark at the time of registering the domain name. The Panel finds that it is more likely than not that Respondent had actual knowledge of Complainant’s name and business and therefore of its rights in the INSTAPAINTING trademark prior to registering the disputed domain name. In fact, he must have known of them, as the evidence shows that he copied portions of HTML code and text content from Complainant’s website and used it as his own. This was particularly so in the case of information of gift cards and shipping policy as well as terms of service and it shows a bad faith intent in registering the domain name. That conduct clearly amounts to bad faith registration.
The Panel expressly finds that Respondent acquired the disputed domain name in or about June 2017 which was well after Complainant had established its trademark rights in or about January 2014. The Panel incorporates here the sections of this decision that have already dealt with that issue. As such, the Panel also finds that Respondent did have actual knowledge of Complainant’s rights in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using a significant part of Complainant’s INSTAPAINTING mark and in view of the conduct that Respondent has engaged in since acquiring the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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 domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: June 29, 2022
