WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oboleo Ltd v. 杨智超 (Zhi Chao Yang), Zhichao Yang, Zhichao, Privacy Administrator, Anonymize, Inc., Carolina Rodrigues, Fundacion Comercio Electronico, and Milen Radumilo

Case No. D2020-1952

1. The Parties

The Complainant is Oboleo Ltd, Cyprus, represented by John Berryhill, Ph.d., Esq., United States of America (“United States”).

The Respondents are 杨智超 (Zhi Chao Yang), China; Zhichao Yang, China; Zhichao, China; Privacy Administrator, Anonymize, Inc., United States; Carolina Rodrigues, Fundacion Comercio Electronico, Panama; and Milen Radumilo, Romania.

2. The Domain Names and Registrars

The disputed domain name <s3cretbenefits.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd.

The disputed domain names <secretbenefitts.com> and <secretbenefitz.com> are registered with Chengdu West Dimension Digital Technology Co., Ltd.

The disputed domain names <asecretbenefits.com>, <comsecretbenefits.com>, <dsecretbenefits.com>, <psecretbenefits.com>, <seacretbenefits.com>, <secreatbenefits.com>, <secredbenefits.com>, <secrefbenefits.com>, <secretbenefist.com>, <secretbenefite.com>, <secretbeneflts.com>, <secretbernefits.com>, <secretbsnefits.com>, <secrtetbenefits.com>, and <seecretbenefits.com> are registered with Cloud Yuqu LLC.

The disputed domain names <scecretbenefits.com>, <secretbenefiits.com>, and <swcretbenefits.com> are registered with Dynadot, LLC.

The disputed domain names <sceretbenefits.com>, <secretvenefits.com>, and <sercetbenefits.com> are registered with Epik, Inc.

The disputed domain names <secrettbenefits.com>, <secrretbenefits.com>, and <wwwsecretbenefits.com> are registered with GoDaddy Online Services Cayman Islands Ltd.

The disputed domain names <seccretbenefits.com> and <secretbenefis.com> are registered with GoDaddy.com, LLC.

The disputed domain name <secretbenefiys.com> is registered with NameSilo, LLC.

The disputed domain name <secretbenwfits.com> is registered with Tucows Inc.

The disputed domain names <bsecretbenefits.com>, <csecretbenefits.com>, <gsecretbenefits.com>, <secretbanefits.com>, <secretbdnefits.com>, <secretbeefits.com>, <secretbeenefits.com>, <secretbenafits.com>, <secretbendfits.com>, <secretbeneefits.com>, <secretbenefeits.com>, <secretbeneffits.com>, <secretbenefifs.com>, <secretbenefitss.com>, <secretbenefkts.com>, <secretbeneftits.com>, <secretbeneifits.com>, <secretbenerits.com>, <secretbenetits.com>, <secretbenfeits.com>, <secrethenefits.com>, <secrfetbenefits.com>, <wsecretbenefits.com>, and <zecretbenefits.com> are registered with West263 International Limited.

Alibaba Cloud Computing (Beijing) Co., Ltd., Chengdu West Dimension Digital Technology Co., Ltd., Cloud Yuqu LLC, Dynadot, LLC, Epik, Inc., GoDaddy Online Services Cayman Islands Ltd, GoDaddy.com, LLC, NameSilo, LLC, Tucows Inc., and West263 International Limited are referred to below individually and collectively as “the Registrar”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. Between July 27, 2020 and August 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On August 7, 2020, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amended Complaint in English.

On August 7, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment.

The Center verified that the Complaint together with the amended 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 Respondents in English and Chinese of the amended Complaint, and the proceedings commenced on August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 4, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 23, 2020. 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 is the owner and operator of a dating website named “Secret Benefits” that it has operated at the address “www.secretbenefits.com” since March 2016. The Complainant has promoted its “Secret Benefits” mark, including through sponsored articles in online publications since at least February 2018. The Complainant is the owner of United States trademark registration number 5,958,569 for SECRET BENEFITS, registered on January 14, 2020 (applied for on March 15, 2018) with a claim of first use in commerce on March 15, 2016, in respect of services in classes 42 and 45, including Internet-based dating services. That trademark registration remains live.

The Respondents are the underlying registrants of the disputed domain names as identified in the Registrar’s WhoIs database, except for Privacy Administrator, Anonymize, Inc., which is a privacy service. According to evidence provided by the Complainant, panels in multiple prior proceedings under the Policy have found that each of the named underlying registrants had registered and was using other domain names in bad faith. As to the relationship among the named Respondents, see section 6.1A below.

The disputed domain names were registered on the following dates by the following registrants:

All the disputed domain names resolve to pay-per-click (“PPC”) landing pages. Most of the landing pages display links for sites related to dating, although the evidence on record regarding twelve of the landing pages only shows that they display links related to benefits, cosmetics or, in one case, vene (apparently meaning “boat” in Finnish) rather than dating.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s trademark SECRET BENEFITS. Each of the disputed domain names contains the words “secret” and “benefits” in the same order as presented in the Complainant’s mark, with minor variations in spelling or pluralization.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or authorized any other party to register domain names identical or confusingly similar with the Complainant’s distinctive SECRET BENEFITS mark for online dating. Each of the disputed domain names resolves to a PPC monetization website which offers competitive or related services to those of the Complainant.

The disputed domain names have been registered and are being used in bad faith. The disputed domain names were all registered in bad faith for the manifest purpose of deriving PPC revenue from traffic due to typographical errors. There is no conceivable good faith reason for the names to have been registered subsequent to the Complainant’s launch of its service for the purpose of directing traffic to a direct competitor of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Procedural Issues

A. Multiple Domain Name Registrants

The Complaint initiates disputes in relation to several nominally different domain name registrants. The Complainant requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules on the ground that all of the disputed domain names are being used in a common plan or scheme. The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel begins by noting that all disputed domain names follow a pattern in that they are similar to the same trademark in the same way (discussed in Section 6.2A below), and they all channel visitors to a PPC landing page operated directly or indirectly (i.e., by way of some manner of interim server forward) by the same provider (Bodis.com).

Forty-six disputed domain names are registered in the name of 杨智超 or a pinyin transliteration of that name (“Zhi Chao Yang” or “Zhichao Yang”), or both. Three other disputed domain names are registered in the name of “Zhichao” but with the same contact email address and phone number as “Zhichao Yang”. A further three disputed domain names were registered using the Anonymize, Inc. privacy service with a different Registrar but, while the names of the underlying registrants have not been disclosed, these three disputed domain names were registered on the same day as several others registered in the name of “Zhichao Yang” or “Zhichao”. All these 52 disputed domain names share the same name servers. In these circumstances, the Panel is persuaded that the registrants of these 52 disputed domain names (杨智超 (Zhi Chao Yang), Zhichao Yang, Zhichao, and Privacy Administrator, Anonymize, Inc.) are under common control or indeed the same person.

The remaining three disputed domain names are registered in other names. Two of these disputed domain names (<seccretbenefits.com> and <secretbenefis.com>) are registered in the name of “Carolina Rodrigues, Fundacion Comercio Electronico” while the other (<secretbenwfits.com>) is registered in the name of “Milen Radumilo”. These three disputed domain names were registered earlier than the other 52 disputed domain names. They are the only disputed domain names registered with GoDaddy.com, LLC or Tucows Inc., and they are the only ones entered on different name servers from the other 52 disputed domain names. Further, although the Complainant has drawn the Panel’s attention to scores of prior proceedings under the Policy involving each of the named underlying registrants in this case, nothing indicates that a complaint against Carolina Rodrigues, Fundacion Comercio Electronico or Milen Radumilo has ever been consolidated with a complaint against 杨智超 (Zhi Chao Yang) or Zhichao Yang. In these circumstances, the Panel is not satisfied that, on the balance of probabilities, these three disputed domain names are under common control with the other 52 disputed domain names.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes regarding杨智超 (Zhi Chao Yang), Zhichao Yang, Zhichao, and Privacy Administrator, Anonymize, Inc., would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes against 杨智超 (Zhi Chao Yang), Zhichao Yang, Zhichao, and Privacy Administrator, Anonymize, Inc. (referred to below as “the Respondent”) in a single proceeding. The Panel declines to consolidate the disputes against Carolina Rodrigues, Fundacion Comercio Electronico, and Milen Radumilo. Consequently, the Panel will not consider further the Complaint as regards the domain names <seccretbenefits.com>, <secretbenefis.com> and <secretbenwfits.com>. This decision is made without prejudice to the possibility of refiling complaints regarding these three domain names.

B. Language of the Proceeding

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 Registrar confirmed that the Registration Agreement for the disputed domain names marked with an asterisk in the table set out in Section 4 above is in English, and the Registration Agreement for the other disputed domain names is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that all of the disputed domain names are a combination of two English words, or typographic variants thereof; and all of the disputed domain names are connected with a PPC lander in English, operated by the Bodis.com domain monetization system that is operated entirely in English.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English and the Registration Agreement for some disputed domain names is also in English. Although the Registration Agreement for some disputed domain names is in Chinese, the Panel has found that the Respondent is under common control or indeed the same person. All but one of the disputed domain names (<secretvenefits.com>) resolve to landing pages entirely in English. From these circumstances, it is reasonable to infer that the Respondent is familiar with English. Further, despite the Center having sent an email regarding the language of the proceeding and the written notice of the amended Complaint in both English and Chinese, the Respondent has not commented on the language of the proceeding or expressed any interest in responding to the Complainant’s contentions. Therefore, the Panel considers that requiring the Complainant to translate the amended Complaint into Chinese would create an undue burden and delay, whereas accepting all documents as filed will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

The Panel recalls its decision on consolidation in section 6.1A above and confirms that section 6.2 concerns all the disputed domain names listed in sections 2 and 4 above except for <seccretbenefits.com>, <secretbenefis.com> and <secretbenwfits.com>.

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the SECRET BENEFITS mark.

Ten of the disputed domain names wholly incorporate the SECRET BENEFITS mark (but for the space between the words, due to technical reasons). These are <asecretbenefits.com>, <bsecretbenefits.com>, <comsecretbenefits.com>, <csecretbenefits.com>, <dsecretbenefits.com>, <gsecretbenefits.com>, <psecretbenefits.com>, <secretbenefitss.com>, <wsecretbenefits.com> and <wwwsecretbenefits.com>.

Of these, eight disputed domain names add a single letter before or after the mark, while two add the letters “com” or “www” before the mark. These are all examples of a practice known as “typosquatting”. The SECRET BENEFITS mark remains clearly recognizable within these disputed domain names.

The operative element of the other disputed domain names is an obvious or intentional misspelling of the SECRET BENEFITS mark, variously interspersing a letter or numeral, omitting a letter, substituting a letter or inverting letters. These are further examples of typosquatting. The Panel does not consider these minor typographical differences capable of dispelling confusing similarity with the Complainant’s trademark either. See WIPO Overview 3.0, section 1.9.

The only other additional element in the disputed domain names is the generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The disputed domain names resolve to PPC landing pages that display links to other websites, in most cases dating websites. There appears to be no reason to register any of the disputed domain names other than to take advantage of Internet users who mistype the Complainant’s domain name <secretbenefits.com> or website address “www.secretbenefits.com”. That does not constitute a bona fide offering of goods or services within the meaning of the first circumstance of paragraph 4(c) of the Policy. This use is either for the commercial gain of the Respondent or the operators of the linked websites, or both. That is not a legitimate noncommercial or fair use of the disputed domain names within the meaning of the third circumstance of paragraph 4(c) of the Policy.

There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that case because it did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.”

As regards registration, the disputed domain names under consideration in this section were registered in 2020, after the registration of the Complainant’s SECRET BENEFITS trademark. All the disputed domain names are examples of typosquatting of the Complainant’s SECRET BENEFITS mark. The composition of the disputed domain names evidences a pattern of targeting that mark. The disputed domain names resolve to PPC landing pages, most of which display links for sites related to the same type of services as those provided by the Complainant. Nothing in the evidence on record indicates any reason to register any of the disputed domain names other than to capitalize on the Complainant’s trademark.

As regards use, the disputed domain names are used to attract Internet users who misspell the Complainant’s trademark or website address and redirect them to other websites, in most cases including other dating websites. All the disputed domain names operate by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites to which they resolve. This use is intentional and either for the Respondent’s own commercial gain, if it is paid to direct traffic to other websites, or for the commercial gain of the operators of those other websites, or both. In each scenario, these facts fall within the circumstance described in paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007‑0267.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules:

(a) the Panel orders that the disputed domain names <asecretbenefits.com>, <bsecretbenefits.com>, <comsecretbenefits.com>, <csecretbenefits.com>, <dsecretbenefits.com>, <gsecretbenefits.com>, <psecretbenefits.com>, <scecretbenefits.com>, <sceretbenefits.com>, <seacretbenefits.com>, <secreatbenefits.com>, <secredbenefits.com>, <secrefbenefits.com>, <secretbanefits.com>, <secretbdnefits.com>, <secretbeefits.com>, <secretbeenefits.com>, <secretbenafits.com>, <secretbendfits.com>, <secretbeneefits.com>, <secretbenefeits.com>, <secretbeneffits.com>, <secretbenefifs.com>, <secretbenefiits.com>, <secretbenefist.com>, <secretbenefite.com>, <secretbenefitss.com>, <secretbenefitts.com>, <secretbenefitz.com>, <secretbenefiys.com>, <secretbenefkts.com>, <secretbeneflts.com>, <secretbeneftits.com>, <secretbeneifits.com>, <secretbenerits.com>, <secretbenetits.com>, <secretbenfeits.com>, <secretbernefits.com>, <secretbsnefits.com>, <secrethenefits.com>, <secrettbenefits.com>, <secretvenefits.com>, <secrfetbenefits.com>, <secrretbenefits.com>, <secrtetbenefits.com>, <seecretbenefits.com>, <sercetbenefits.com>, <swcretbenefits.com>, <s3cretbenefits.com>, <wsecretbenefits.com>, <wwwsecretbenefits.com>, and <zecretbenefits.com> shall be transferred to the Complainant; and

(b) the Complaint is denied as regards the domain names <seccretbenefits.com>, <secretbenefis.com> and <secretbenwfits.com>.

Matthew Kennedy
Sole Panelist
Date: October 10, 2020

¹ For each of the disputed domain names marked with an asterisk (*), the Registration Agreement is in English.