WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tuo Liu v. Jau Khan
Case No. D2018-1361
1. The Parties
The Complainant is Tuo Liu of Flushing, New York, United States of America (“United States”), represented by Yaoyu Liu, United States.
The Respondent is Jau Khan of Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <laomaspicy.com> (the “Domain Name”) is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2018. On June 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 20, 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.
On July 23, 2018, the Panel issued the Administrative Panel Procedural Order No. 1 to the Parties, the relevant text being reproduced below.
“Under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1) The registration for the LAOMA SPICY trade mark (Reg. No. 5,462,601) appears to indicate that the trade mark has been in use for restaurants since November 2015. The Complainant provides no detail about the Complainant, its business, the manner in which it uses the LAOMA SPICY trade mark and its reputation.
2) In the Complaint, under the heading “C. The domain name[s] [was/were] registered and [is/are] being used in bad faith” the Complainant states that “The respondent reached out to Complainant to discuss about selling the domain name with the only purpose to make profit out of bad faith registration of domain name.” However, the Complainant provides no details or documentary support for this allegation, including when this discussion took place and in what manner.
Therefore the Panel makes the following orders:
1) The Complainant has until July 27, 2018, to file a supplemental statement or documents providing:
a. information about the Complainant, its business, the manner in which it uses the LAOMA SPICY trade mark and its reputation; and
b. information about any discussions between the Complainant and the Respondent about selling the disputed domain name <laomaspicy.com>. In particular the Complainant should:
i. provide details about when this discussion took place and the manner of communication (email, telephone, etc.);
ii. if the Complainant has relevant documents, such as emails or letters relating to the possible sale of the disputed domain name, provide those documents; and/or
iii. if the Complainant has no relevant documents, provide a witness statement or similar with detailed particulars about the conversation including when it occurred, with whom, how the offer was made and the Complainant’s response.
2) The Respondent shall thereafter have until August 2, 2018, to file any response to the Complainant’s reply to this order.
3) Any submissions should be forwarded to the WIPO Arbitration and Mediation Center by email to “[…]@wipo.int” for forwarding to the Panel.
4) The Panel will deliver its decision on or before August 14, 2018.”
On July 27, 2018 the Complainant filed a response to the Panel Order. The Respondent did not file any material by the August 2, 2018 (or indeed at the date of the Decision).
4. Factual Background
The Complainant is the owner of the trade mark registration No. 5,462,601 in the United States for LAOMA SPICY and a device consisting of two stylized non-Latin characters (the “LAOMA SPICY Mark”). The LAOMA SPICY Mark was filed on July 25, 2017, and registered on May 8, 2018 for a variety of restaurant related services in class 43. The registration states that the date of first use in commerce was November 2, 2015, and that the non-Latin characters in the mark transliterate to “Lao Ma” and this means “mother” in English.
Presently the Complainant now owns or licenses restaurants in New York, New Jersey and Maryland that trade under the LAOMA SPICY Mark and specializes in Chinese cuisine.
The Domain Name <laomaspicy.com> was registered on July 31, 2017 and resolves to a website displaying the message “laomaspicy.com is coming soon”. On August 24, 2017 a communication occurred between the Complainant and a domain broker at the former registrar of the Domain Name in which the domain broker stated that the Respondent was willing to sell the Domain Name for USD 8,500.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical to the Complainant’s LAOMA SPICY Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the LAOMA SPICY Mark in the United States. The Domain Name is identical to the LAOMA SPICY Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. The Respondent is not using the Domain Name for any active website and hence has not made any demonstrable preparations to use the Domain Name for any legitimate purpose.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered 6 days after the Complainant filed its application to trade mark LAOMA SPICY Mark. The Respondent has never shown any intention to use the Domain Name. The Respondent reached out to the Complainant to discuss selling the Domain Name with the aim of making a profit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the LAOMA SPICY Mark in the United States. The Domain Name incorporates the Latin textual elements of the LAOMA SPICY Mark, being the words “laoma spicy” in their entirety.
The omission of the non-Latin elements in the LAOMA SPICY Mark in the Domain Name does not prevent a finding of confusing similarity as the non-Latin elements are a transliteration of the words “lao ma” which is already part of the Domain Name. The Panel finds that the Domain Name is confusingly similar to the Complainant’s LAOMA SPICY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the LAOMA SPICY Mark or a mark similar to the LAOMA SPICY Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate non-commercial use or made use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; in short there is no evidence of use of the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’s registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that, while the Complainant has provided little evidence of the fame of the LAOMA SPICY Mark at the date of registration, on the balance of probabilities it is likely that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name was registered 6 days after the Complainant filed its registration with the United States Patent and Trade mark Office. Within two months of registration the Respondent was offering the Domain Name for sale to the Complainant. The Domain Name is unused and there has been no apparent effort to develop any active website. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant, potentially as part of a practice to register domain names corresponding to trade marks that had recently been applied for. The registration of the Domain Name in awareness of the Complainant and any rights it had at the time in the LAOMA SPICY Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Panel considers that the circumstances of this case, including the lack of any use of the Domain Name, the lack of any apparent good faith purpose behind the registration, and the offer to sell the Domain Name shortly after registration are such that the Respondent registered and has used the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its out-of-pocket costs related to the Domain Name. Such conduct amounts to bad faith under the Policy.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <laomaspicy.com> be transferred to the Complainant.
Date: August 3, 2018