The Complainant is TPS Parking Management, LLC of Chicago, Illinois, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, United States.
The Respondent is Liujunyao of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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.
On October 11, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On October 12, 2018, the Complainant requested that English be the language of the proceeding. The Respondent did not reply.
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 in English and Chinese of the Complaint, and the proceedings commenced on October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on November 21, 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, off-airport parking company based in Chicago, Illinois, United States. The Complainant’s service includes vehicle parking lot and shuttle services in the United States. Its service covers 22 cities in the United States.
The Complainant is the owner of various THEPARKINGSPOT and SPOT mark in different jurisdictions, including United States trademark No. 4951830, registered on May 3, 2016 and No. 2351007 registered on May 16, 2000; Australian trademark No. 1688904 registered on April 22, 2015; Canadian Trademak No. TMA785168 registered on December 17, 2010 and European Union trademark No. 015078454 registered in 2016.
The Complainant is the owner of the domain name .
The Respondent is an individual based in Beijing, China.
The disputed domain name was registered on June 12, 2018 and resolves to a webpage that appears to be promoting online gambling and also contains other miscellaneous links. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name and the Complainant’s trademark THEPARKINGSPOT are identical or confusingly similar. The disputed domain name contains THEPARKINGSPOT in its entirety as the distinctive part of the disputed domain name. The additional English word “coupon” included is merely a generic term that promotes the service itself.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for THEPARKINGSPOT. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the THEPARKINGSPOT trademark given its longstanding rights in the marks, the Respondent acquired the disputed domain name to disrupt the business of the Complainant and/or to prevent the Complainant from reflecting its mark in a corresponding domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The Language of the Registration Agreement is in Chinese.
The Complainant requests that the language of proceedings be English on the grounds that the Complainant is a Unites States based company and the Respondent understands English.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. This factor leads the Panel to determine to follow the Center’s preliminary determination to accept the Complaint in English and a response in either English or Chinese. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name , other than the dictionary term “coupon”, is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s THEPARKINGSPOT mark in full with the additional word “coupon” which is a term that would attract Internet users to enter and promote the Complainant’s service.
The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.
The Panel notes that the Complainant does not have a registered trademark for THEPARKINGSPOT in China where the Respondent is based. However, the ownership of a trademark is generally considered to be a threshold standing issue. (See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant owns several THEPARKINGSPOT trademarks in the world. The Respondent has no business or any kind of relationships (licensee, distributor) with the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Considering the absence of a response by the Respondent and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith. It is likely the Respondent knew of the Complainant when it registered the disputed domain name, as it comprises of the Complainant’s mark in full.
Furthermore, the current “pay-per-click” advertisements for online gambling and the various links of miscellaneous articles on the site suggest the Respondent is making a commercial gain from the site.
Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain name in bad faith as per paragraph 4(b)(iv) of the Policy. See section 3.1 of the WIPO Overview 3.0.
The third part of the paragraph 4(a) of the Policy is therefore satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: December 11, 2018
Full & Egal Universal Law Academy