WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Linode, LLC v. Zhang Mingya
Case No. D2010-1162
1. The Parties
The Complainant is Linode, LLC of New Jersey, United States of America, represented by internally.
The Respondent is Zhang Mingya of Shenzhen, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <linodevps.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2010. On July 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 16, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2010. The Center received email communications from the Respondent on July 22, 2010 and July 23, 2010.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 16, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
According to the Complainant Linode is an Internet service provider specializing in the provision of Linux Virtual Private Server (VPS) Systems. Based in Absecon, New Jersey, United States, the Complainant has been in continuous operation for over 7 years.
The Complainant has a pending trade mark registration with the United States Patent and Trade Mark Office (“USPTO”) for the mark LINODE, application number 77516597. The Complainant points out that the mark was filed on July 8, 2008 and that there have been no statements of opposition to registration filed. The period of opposition ended on May 27, 2010. The Complainant relies upon first use of the mark commencing circa. June 2003. The mark LINODE is also the subject of an application for registration as a Community Trade Mark.
The history of the dispute is that the Complainant initially became aware of the registration and use of the disputed domain name in connection with attempts to amass the Complainant's service credits via a referral code hosted on a website which used the Complainant's trade mark on an unauthorized basis. The Complainant noted the unauthorized use of images belonging to it on the website. As the infringing website was hosted on server resources owned by the Complainant the site operator was told that he was not authorized to use the Complainant's name in trade and was asked to immediately cease such activities.
Exhibited to the Complaint is a series of email exchanges commencing on April 28, 2010 and pointing out that the Respondent operates a website containing unauthorized use of images from the “www.linode.com” website. It can be seen from the exhibit that the Complainant offered to purchase the domain name from the Respondent on several occasions initially in exchange for service credit and later in exchange for up to USD400.00. These offers were rebutted with the Respondent finally asking for the sum of USD201,000 in exchange for the disputed domain name.
An email in Chinese was received by the Center by way of Response on July 22, 2010 from which it appears that the Respondent was willing to transfer the disputed domain name.
The email in Chinese was translated by the Complainant and submitted to the Center in its letter of July 23, 2010. The translation states:
"I do not intend to retain and use this domain name, if I sell the domain name to Philip, will become a malicious registration, so I can not be sold to Philip! This domain will expire in February 2011, at that time, I do not renewals, Philip to register this domain name on it, or to contact GoDaddy Philip this domain name to Philip on it! Because I do not know the process of this domain name to Philip (sorry, my English is spoken well –)
thank you for your interest in this domain".
5. Parties’ Contentions
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant relies upon its applications for trade mark registration and its use (since June 2003) of the mark LINODE.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant points out that there is no evidence of any rights in favour of the Respondent to use the domain name.
(iii) The domain name was registered and is being used in bad faith.
The Complaint relies upon the unauthorised use of images by the Respondent on the website associated with the disputed domain name. It also relies upon the request by the Respondent for payment of USD201,000 to transfer the disputed domain name. The Complainant also relies upon the fact that visitors who attempt to visit the website associated with the disputed domain name were redirected to a different pages containing images from VPS.net a direct competitors of Linode.
There are no contentions made by the Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds on the basis of the Complainant's evidence as to use that the Complainant currently has unregistered trade mark rights in the mark LINODE. The applications for registration of the mark LINODE in the United States and in the European Community have not yet been granted. However the Panel accepts in the absence of any evidence to the contrary that the mark LINODE has been used by the Complainant since 2003 and that the Complainant has established unregistered trade mark rights.
The Panel also takes into account that the disputed domain name contains the term “vps” in conjunction with “Linode”. It notes from the Complainant's evidence that the Complainant's primary product is the provision of VPS services.
In these circumstances the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel also notes on the evidence submitted by the Complainant that it owns a number of domain names containing the mark LINODE including <linodevps.biz>, <linodevps.info>, <linodevps.net>, <linodevps.org> and <linodevps.us>.
B. Rights or Legitimate Interests
The Panel accepts, in the absence of any evidence from the Respondent to the contrary, and taking into account the Panel’s findings under the third element, that there is no evidence that the Respondent had any rights or legitimate interests in disputed domain name.
C. Bad Faith
The Panel finds on the evidence adduced by the Complainant that the Respondent asked for USD201,000.00 to transfer the disputed domain name even though the Complainant originally indicated it was prepared to exchange the domain name for up to USD400.00.
Paragraph 4(b)(i) of the Policy provides that if a domain name has been acquired for the purpose of transfer to the complainant who is the owner of the trade mark for valuable consideration in excess of documented out of pocket costs directly related to the domain name, that is evidence of the registration and use of the domain name in bad faith.
In the Panel's view that is the position here when the Respondent apparently rejected the offer of USD400.00 and effectively made a counteroffer for transfer of the disputed domain name at a figure of USD201,000.00.
The Panel also accepts the force of the Complainant's submission that for a certain period Internet users who attempted to visit the website associated with the domain name were redirected websites of direct competitors. This is evidenced by exhibit B1 to the Complaint.
In these circumstances the Panel finds that the dispute domain name was registered and used in bad faith.
For all the foregoing reasons in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <linodevps.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: August 30, 2010