The Complainant is Nyolus Technologies, Inc. of Vancouver, Canada, internally represented.
The Respondent is Shanshan Huang, This domain name is for sale of Jiangsu, China.
The disputed domain name <nyoluscloud.com> is registered with NameSilo, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2017. On October 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2017, 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.
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 November 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on December 7, 2017. 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.
The Complainant is involved in the cloud hosting business. The Complainant claims that it has been using the trademark NYOLUS CLOUD since July 6, 2010 and owns the United States of America trademark registration no. 5,204,199 as of May 16, 2017.
The disputed domain name was registered on October 5, 2016 and resolves to a parking website offering the disputed domain name for sale.
The Respondent has previously been an unsuccessful respondent in past proceedings under the Policy. For example, in Güde GmbH & Co. KG v. Shanshan Huang, WIPO Case No. D2017-0562 involved circumstances not dissimilar to the present case.
As the Respondent gave no Response, there is little information about the business of the Respondent. But the previous UDRP decisions in which the Respondent has been involved suggest that the Respondent has serially engaged in the business of registering domain names, which include trademarks registered by others, and then offering those domain names for sale and linking them to "parking" websites.
The Complainant is the owner of registered marks for NYOLUS CLOUD, registered on May 16, 2017 on the principal register of the United States Patent and Trademark Office ("USPTO"). The Complainant is also the owner of a registered mark for NYOLUS, also registered on May 16, 2017 on the principal register of the USPTO. Both marks have a claimed first use in commerce from July 2010. The Complainant's registrations were first filed in September 2016.
The Complainant notes that it is the owner of the domain name <nyolus.com>.
The Complainant alleges that the disputed domain name is identical, and also confusingly similar, with the Complainant's domain name and trademarks. The Complainant says that "nyoluscloud" is synonymous with the Complainant's products and services.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that it designed its trademarks and that, to the best of its knowledge, neither "Nyolus Cloud" or "Nyolus" have any meaning in any language. The Complainant has not authorized the Respondent to use its mark in the disputed domain name, the Respondent is not known by the disputed domain name, and has never used it before the Complainant's use of <nyolus.com>. The Complainant says that the Respondent maliciously registered the disputed domain name on October 5, 2016 right after the USPTO made the Complainant's trademarks visible to the public on October 4, 2016 and October 3, 2016. The Complainant says that this demonstrated that the Respondent is trying to use or sell the disputed domain name for illegitimate gains. The Complainant also refers to other decisions under the Policy which refer to the Respondent's cybersquatting activities and registration of domain names in bad faith.
The Complainant also alleges that the disputed domain name was registered and has been used in bad faith. The Complainant says this is demonstrated by the Respondent's registration of the disputed domain name immediately after the Complainant's trademark applications were published by the USPTO. The Respondent has demonstrated a pattern of registering domain names of other trademark owners in similar circumstances, as referenced in past proceedings under the Policy.
The WhoIs database shows that the disputed domain name is offered for sale, and the name of the Respondent's business is itself "this domain is for sale". The email address of the Respondent also includes "visit.this.domain.and.buy.it". It appears that the Respondent is offering the disputed domain name for sale for USD 5,500, and is directing it to a parking page with links to third party websites, which presumably generate pay-per-click revenue.
The Respondent did not reply to the Complainant's contentions.
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith and is being used in bad faith.
Each of these three elements is discussed in turn below.
There is no dispute that the Complainant has rights in its registered marks NYOLUS CLOUD and NYOLUS, outlined above.
The disputed domain name wholly incorporates the Complainant's NYOLUS trademark, as its first-appearing element, and adds the term "cloud". That term is obviously descriptive of the Complainant's cloud hosting business. The disputed domain name also wholly incorporates the Complainant's NYOLUS CLOUD trademark. A large number of cases under the Policy have found that the entire incorporation of a complainant's mark in a domain name can lead to a finding of confusing similarity. This Panel likewise finds that the disputed domain name is confusingly similar to the Complainant's NYOLUS and NYOLUS CLOUD trademarks.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The second element which the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name.
As outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the WIPO Overview 3.0):
"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 has established a prima facie case against the Respondent in this respect, with its evidence and argument. The Respondent has made no Response, and so provided no rebuttal or evidence to displace the prima facie case against him.
Further, in the circumstances of this case, the Panel finds it inconceivable that the Respondent could establish any such rights or legitimate interests. As discussed further below, the Respondent has demonstrated a pattern of bad faith registration of third-party marks in circumstances that are similar to this case.
In the absence of a Response, under paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate. The Panel in this case considers that it may accept all reasonable inferences and allegations in the Complaint as true. See also, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149. Primarily, the Panel draws is that the Respondent's motivation and conduct in past UDRP cases, which are similar to this one, reflects a similar motivation and conduct in this case. That is, the Panel infers that the Respondent lacks rights and legitimate interests and has been motivated in this case to take unfair advantage of the Complainant's mark.
For these reasons, the Panel finds that the Complainant has established it case under paragraph 4(a)(ii) of the Policy.
A threshold issue in relation to this third element is whether the Respondent's registration of the disputed domain name can have been in bad faith, given that the disputed domain name was registered before the Complainant acquitted registered rights in its marks. The Respondent registered the disputed domain name in October 2016. The Complainant's marks were registered in registered in May 2017 (first filed in September 2016).
This issue is addressed in the WIPO Overview 3.0, which summarises the consensus view of UDRP panelists on this issue. The consensus view is that "…where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent." However this general rule is subject to the exception that "in certain limited circumstances where the facts of the case establish that the respondent's intent in registering the domain name was to unfairly capitalize on the complainant's nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name…following the complainant's filing of a trademark application."
The circumstances of this case fall clearly within this exception. As indicated in the Complaint, the Respondent registered the disputed domain name almost immediately after the Complainant's filing for registration was made public by the USPTO. The Complainant's mark appears distinctive. The Respondent chose a confusingly similar domain name incorporating a term ("cloud") relating directly to the Complainant's business. The Respondent has a history of registering domain names that incorporate newly filed trademarks: see e.g., Güde GmbH & Co. KG v. Shanshan Huang, supra. The Respondent has also advertised the disputed domain name for sale and, in the meantime, linked it to a "parking webpage".
Taken together, these circumstances put the Panel in little doubt that the Respondent, when he registered and used the disputed domain name, was motivated to unfairly exploit the value of the Complainant's trademarks. Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith, for the purpose of 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 disputed domain name <nyoluscloud.com> be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: December 21, 2017