Wednesday , August 17 2022

Buyer of #domain paid for the sins of the previous owner — DomainGang :DomainGang

The registrant of Mohu.com acquired the domain in the aftermarket in 2021. Registered in 2000, the domain changed hands via a sale, all while the US company Motennas LLC registered the mark MOHU in 2013.

Apparently, the previous owner of Mohu.com offered it for sale to the Complainant in this UDRP, seeking $25,000 dollars.

They provided copies of these emails, but is it fair for the new owner to pay for the sins of the previous owner? That sale is often treated as a new registration as far as UDRP cases go, particularly when there is an existing trademark that predates the domain’s transfer.

The sole panelist at the Forum (NAF) ordered the aged, four letter domain Mohu.com to be transferred to the Complainant.

Motennas, LLC v. FengWenJia

Claim Number: FA2203001986623

PARTIES

Complainant is Motennas, LLC (“Complainant”), represented by Joel R. Samuels of Harness, Dickey & Pierce, PLC, Missouri, USA. Respondent is FengWenJia (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with 22net, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

David P. Miranda, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 2, 2022; the Forum received payment on March 2, 2022. The Complaint was received in English.

On March 4, 2022, 22net, Inc. confirmed by e-mail to the Forum that the domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 14, 2022, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of April 4, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected] Also on March 14, 2022, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received in English and determined to be complete on March 30, 2022.

On April 4, 2022, an Additional Submission was received by Complainant and considered. On April 6, 2022, an Additional Submission was received by Respondent and considered.

On April 6, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Motennas, LLC, operates a tv antenna business. Complainant has rights in the MOHU mark based on registration of the mark with the USPTO (e.g., Reg. No. 4,280,031, registered Jan. 22, 2013). See Compl. Ex. 3. Respondent’s domain name is confusingly similar or identical to Complainant’s MOHU mark as it fully incorporates the mark and merely adds “.com” generic top level domain (“gTLD”).

Complainant contends Respondent lacks rights and legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the MOHU mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain is inactive and may be used to distribute malware. Furthermore, Respondent previously offered the domain name for sale.

Respondent registered and uses the domain name in bad faith. Respondent previously offered the disputed domain name for sale. Additionally, Respondent uses the domain to attract users for commercial gain. Respondent also inactively holds the disputed domain name and may distribute malware. Finally, Respondent had actual knowledge of Complainant’s rights in the MOHU mark based on the fame of the mark.

B. Respondent

Respondent, Feng Wenjia, established the Henan Xinyifu Technology Co., Ltd. and Henan Mohuili Information Technology Co., Ltd. companies, which provide website development and promotion. Respondent has rights in the 魔狐 mark based on registration with the CNIPA (e.g., Reg. No. 57312069, filed June 29, 2021) and the Pinyin for the mark is MOHU. See Resp. Annexes 1 & 6. The domain name is a general word and is not confusingly similar since Respondent and Complainant operate in different fields of business.

Respondent has rights and legitimate interests in the domain name. Respondent is commonly known by the MOHU mark. Additionally, Respondent uses the domain name in connection with its legitimate business services and has no intention to mislead Complainant’s consumers.

Respondent registered and uses the domain name in good faith. Respondent obtained the disputed domain name in good faith through an auction. The offer to sell the disputed domain name was not made by Respondent and was prior to Respondent’s acquisition of the disputed domain name. Additionally, Respondent does not use the disputed domain name for malware and the evidence provided by Complainant is merely the result of Complainant’s own computer settings. Finally, Complainant engages in reverse domain name hijacking.

The domain name was acquired by Respondent on June 14, 2021. See Compl. Ex. 1 & Resp. Annex 5.

FINDINGS

Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant asserts rights in the MOHU mark based on registration of the mark with the USPTO (e.g., Reg. No. 4,280,031, registered Jan. 22, 2013). See Compl. Ex. 3. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Since Complainant provides evidence of registration of the MOHU mark with the USPTO, Complainant has rights in the mark under Policy ¶ 4(a)(i).

Complainant argues that Respondent’s domain name is confusingly similar or identical to Complainant’s MOHU mark as it fully incorporates the mark and merely adds “.com” gTLD. When a disputed domain name incorporates an entire mark and simply adds a gTLD it is considered identical to the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Thus, the disputed domain name is identical to the MOHU mark under Policy ¶ 4(a)(i).

While Respondent contends that the domain name is comprised of a common and generic term and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant argues that Respondent lacks rights and legitimate interests in the domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the MOHU mark. WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). Additionally, lack of permission or authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information lists “FengWenJia” as the registrant and Complainant asserts Respondent is not authorized to use the MOHU mark. See Registrar Verification Email. Thus, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).

Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain is inactive and may be used to distribute malware. The inactive holding of a disputed domain name is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Thus, Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

Furthermore, Complainant contends Respondent lacks rights and legitimate interests in the disputed domain name. Respondent did not apply for a trademark containing the MOHO mark until June 29, 2021. This is a different spelling than the domain name at issue. Respondent lacks rights and legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the domain name in bad faith because Respondent previously offered the disputed domain name for sale. An offer to sell a disputed domain name in excess of registration costs indicates bad faith under Policy ¶ 4(b)(i), if the respondent intended to make such an offer when registering the disputed domain name. See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot showing the disputed domain name was previously offered for sale and copies of emails indicating a prior owner of domain offered to sell the domain name to Complainant for $25,000. See Compl. Exs. 5 & 7.

Complainant also argues that Respondent’s bad faith is evidenced by the inactive holding of the disputed domain name. Failure to make active use of a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Complainant provides a screenshot showing the disputed domain name resolves to an error message. See Compl. Ex. 6.

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.

Complainant has satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.

David P. Miranda, Esq., as Panelist

Dated: April 20, 2022

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