The Complainant is AlphaGraphics, Inc., United States of America (“United States” or “US”), represented by Barzanò & Zanardo Milano S.p.A., Italy.
The Respondent is 吴元锋 (Wu Yuan Feng), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on August 27, 2021.
On August 25, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On August 26, 2021, the Complainant confirmed its request that English be the language of the administrative proceeding. The Respondent did not comment on the language of the administrative proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on September 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 4, 2021. 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 BackgroundThe Complainant is a franchising chain founded in 1970 and headquartered in the US. The Complainant’s franchising network currently consists of more than 270 independently owned and operated marketing service providers, located across six geographical areas (the US, United Kingdom, Brazil, China, Kong Hong, China, and Saudi Arabia), which also provide full-service print shops. The Complainant’s franchising network currently provides more than 200,000 business customers with print and marketing services. The Complainant provides evidence that its AlphaGraphics franchising network has received a number of awards and prizes, including recognition for high franchisee satisfaction ratings by the “Franchise Business Review”, in December 2019.
The Complainant provides evidence that it owns a trademark portfolio for ALPHAGRAPHICS (word and logo marks), including, but not limited to, US trademark registration number 1408868 for the ALPHAGRAPHICS word mark, registered on September 9, 1986, and US trademark registration number 5415867 for the ALPHAGRAPHICS logo mark, registered on March 6, 2018. The Complainant also owns a portfolio of official domain names, including,
The disputed domain name was registered on March 24, 2021, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an inactive webpage.
5. Parties’ Contentions A. ComplainantThe Complainant essentially contends that the disputed domain name is confusingly similar to its trademark for ALPHAGRAPHICS, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are distinctive and well known, and submits company and marketing information regarding its business operations. The Complainant particularly contends that the disputed domain name refers to the particular geographic location of one of its franchisees, namely AlphaGraphics Sugar Land, which serves the greater Southwest Houston, Stafford, Sugar Land and surrounding areas in Texas, United States. The Complainant also claims that there are no justifications for the use of its trademark in the disputed domain name, contends that the use made of the disputed domain name by the Respondent amounts to passive holding of the disputed domain name, which, it claims, does not confer any rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant claims that the Respondent has registered, and is using the disputed domain name in bad faith. Finally, the Complainant claims, in its initial Complaint, that the Respondent is offering the disputed domain name for sale for a sum well above the mere registration costs, however, the Panel notes that this is not reflected in any of the evidence submitted, and the Panel will therefore disregard this particular claim.
The Complainant requests that the disputed domain name be transferred to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Issue: Language of the administrative proceedingPursuant to paragraph 11(a) of the Rules, 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.
According to the Registrar’s verification response, the Registration Agreement for the disputed domain name is in Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.
The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its response and arguments in either English or Chinese, but chose not to do so); the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; the fact that the disputed domain name contains the English words “sugar” and “land”; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and the language of this administrative proceeding shall be English.
6.2. Discussion and Findings on the meritsThe Policy requires the Complainant to prove three elements:
(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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has shown that it has valid rights in the mark ALPHAGRAPHICS based on its intensive use and long-standing registration of the same as trademark.
As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of three elements, respectively the Complainant’s ALPHAGRAPHICS trademark combined with two terms, “sugar” and “land”, which the Panel considers to refer, in all likelihood, to the particular geographical location of the Complainant’s franchisee store AlphaGraphics Sugar Land, based in the Sugar Land area in Texas, United States. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s ALPHAGRAPHICS trademark, which remains easily recognizable as its only distinctive feature, and that the addition of terms “sugar” and “land” therefore does not prevent a finding of confusing similarity. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark for ALPHAGRAPHICS, and that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate InterestsOn the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name, and is not making legitimate noncommercial use or fair use of the Complainant’s trademark. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.
Upon review of the facts and evidence provided by the Complainant, the Panel notes that the disputed domain name directs to an inactive webpage and is not being used. In this regard, the Panel finds that holding the disputed domain name passively, without making any use of it, does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei),
WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui),
WIPO Case No. D2021-1685).
Furthermore, the nature of the disputed domain name, being confusingly similar to the Complainant’s trademark for ALPHAGRAPHICS and incorporating the name of the geographical location “Sugar Land”, where one of the Complainant’s franchisees is established, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant or one of its franchisees (see WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad FaithThe Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademark, by using such trademark in its entirety in the disputed domain name, combined with the name of the geographical location “Sugar Land”, to mislead and divert consumers to the disputed domain name. Given the distinctiveness and well-known nature of the Complainant’s trademark, the Panel finds that the registration of the disputed domain name clearly targeted such trademark, and that the Respondent knew, or at least should have known, of the existence of the Complainant’s well-known mark. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademark in ALPHAGRAPHICS and used it extensively. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.”
The Panel has reviewed all elements of this case, and attributes particular relevance to the following elements: the fact that the disputed domain name contains the entirety of the Complainant’s trademark, the high degree of distinctiveness and the well-known nature of the Complainant’s trademarks the fact that the Respondent used incorrect contact details, and the unlikelihood of any good faith use to which the domain name may be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.
7. DecisionFor 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,
Deanna Wong Wai Man
Sole Panelist
Date: October 15, 2021