WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Leet Woodworking, LLC v. Zhong Jinzhang
Case No. D2018-1137
1. The Parties
The Complainant is E. Leet Woodworking, LLC of Plainwell, Michigan, United States of America (“United States” or “U.S.”), internally represented.
The Respondent is Zhong Jinzhang of Ruijin, China.
2. The Domain Name and Registrar
The disputed domain name <boardstall.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 30, 2018.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 26, 2018. 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
The Complainant is E. Leet Woodworking LLC, a company which sells clothing goods such as sweatshirts, t-shirts, tops as well as storage racks for athletic equipment. The Complainant is the owner of a U.S. trademark No. 4203299 dated Sep. 4, 2012 for BOARD STALL.
The disputed domain name <boardstall.com> was registered on April 3, 2018.
Currently the disputed domain name resolves to a website containing pornographic materials in the Chinese language.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered mark BOARD STALL since it contains the Complainant’s mark in its entirety.
The Complainant also argues that the Respondent has no rights or legitimate interest in respect of the domain name since the Complainant is the trademark owner under which the Complainant is selling goods.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith as it is defaming the Complainants trademark rights with pornographic materials which are promoted under the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <boardstall.com> integrates the Complainant’s BOARD STALL trademark in its entirety.
The disputed domain name and the Complainant’s trademark differ in the addition of the generic Top-Level Domain (“gTLD”) “.com”. The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc. WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Therefore, the gTLD “.com” iswithout significance in the present case since the use of a Top-Level Domain is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainant owns a trademark registration long before the disputed domain name was registered, the Respondent is not known by the Complainant’s mark and the Complainant did not license or otherwise permitted the Respondent to use its trademark. The Complainant argues that the Respondent is defaming its trademark with pornographic materials. By this, the Panel understands that the Respondent was referring to paragraph 4(c)(iii) arguing that the Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel however is not of the view that operating an adult content website under a domain name is, by itself, a non-legitimate or unfair use of a domain name. Though for the purpose of this element in this case, the Panel finds that the Complainant has established a prima facie case in this regard and the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. The Respondent has failed to assert any such rights or legitimate interests. The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
With respect to this element, the Complainant did not provide any of the circumstances provided for under paragraph 4(a)(iii) of the Policy. When referring to this element, the Complainant repeats its single allegation – that the Respondent is defaming the Complainant’s trademark rights by promoting pornographic materials on the website to which the disputed domain name resolves. The Complainant added that it is currently selling its products under the BOARD STALL trademark and plans to continue selling its products under this brand name. The Complainant made no other allegation with respect to the bad faith registration and use of the disputed domain name and the Panel is to try and construe the meaning behind the statements made by the Complainant.
The evidence filed by the Complainant shows that the Respondent registered the disputed domain name after the Complainant registered its trademark, that the disputed domain name resolves to a website offering pornographic materials and what can also be described as other adult content and related services. According to the evidence filed by the Complainant, the Complainant has owned the registered mark BOARD STALL since the year 2012, whereas the disputed domain name was registered in 2018. This is suggestive of the Respondent’s bad faith (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Panels have established that a respondent’s website promoting and offering pornographic materials is another indication of bad faith registration and use of a domain name based on tarnishment (see CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008; The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743; Fugro N.V. v. Elmer Jacobs, WIPO Case No. D2003-0863; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; America Online v. Viper, WIPO Case No. D2000-1198).
However, to succeed the Complainant would also have to allege and provide evidence that shows that the Respondent was aware of the Complainant when he registered the disputed domain name. The Complainant name is “E. Leet Woodworking LLC” and not “Board Stall”. The Complainant is based in Michigan, United States and appears to have been operating a custom woodworking business with a single facility since 1986. The Complainant operates its website under the domain name <michigancustomkitchens.com> and is promoting its services in the United States. The evidence provided by the Complainant and the search conducted by the Panel failed to show any clear connection between the Complainant and the term “Board Stall”. The Complainant brought no evidence showing previous or current sales of products under the BOARD STALL trademark. No evidence was proffered showing a website offering any products under the BOARD STALL trademark. The Panel conducted a search of the Complainant’s trademark file at the USPTO. The Panel found a specimen of use filed by the Complainant showing T-shirts with the trademark BOARD STALL appearing next to a person performing a skateboard maneuver. A search conducted by the Panel shows that the term “Board Stall” describes a ramp skateboarding or snowboarding trick. The words describe that the skateboard or snowboard is stalled on an object by the rider. A search by the Panel could not locate that the T-shirts are sold by the Complainant online. Furthermore, the Complainant provided no information about the Respondent except that it is based in JiangXi Province in China and is operating the website under the disputed domain name.
As noted by previous UDRP panels, while the fact that the Respondent is operating a pornographic website under the disputed domain name may be an indication of bad faith, a complainant is required to establish that the respondent intended to target the complainant’s trademark (See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). A complainant may bring a wide range of evidence to support such intention, including, but not limited to evidence showing: the wide recognition a complainant has attained (See Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215), specific targeting of the complainant and its trademark (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743), offer to sell the domain name by the respondent (Coral Trademarks, Ltd. v. Eastern Net, Inc., WIPO Case No. D2000-1295), the failure of the respondent to respond to cease and desist letters (America Online, Inc. v. Viper, WIPO Case No. D2000-1198), the respondent presented false registration information (MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). The range of evidence sufficient to establish bad faith registration and use of the disputed domain name depends on the circumstances of each case. A higher burden of proof and accordingly sufficient and good evidence would be required where there is no support that the trademark is widely known, where the trademark appears to be weak, or where there is no indication that the respondent could have been exposed to the complainant’s trademark before the disputed domain name was registered.
In this case, the Complainant attached an email sent by its representative which alerted the Respondent to the allegation that he is defaming the Complainant’s trademark. The brief email was sent from what appears to be the personal Gmail account of the Complainant’s representative. It provides no further information about the Complainant and its business as it relates to the BOARD STALL trademarks or the associated goods, nor of the circumstances that relate to the allegation of defamation. Since the Respondent failed to answer the email, the Panel is willing to draw a negative inference against the Respondent. However, in the particular circumstances of this case as described above, this negative inference and the above indications of bad faith are insufficient to establish the necessary bad faith registration and use of the disputed domain name by the Respondent.
The Panel finds that in the particular circumstances of this case, it is unclear that the Respondent was or could have been aware of the Complainant or its trademark when he registered the disputed domain name and therefore there is no indication that the Respondent was somehow targeting the Complainant. The burden is placed upon the Complainant to show that the Respondent registered and used the disputed domain name in bad faith. The Complainant failed to meet this burden of proof.
Accordingly, having regard to the particular circumstances of this case, the Panel finds that the Complainant has failed to meet its burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Date: July 10, 2018