Decision for dispute CAC-UDRP-108507

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has submitted evidence that it is the licensed user of the United States trademark “ACHEMBLOCK Advanced ChemBlocks Inc”, registration number 6,573,245, owned by Mr. Hongwang Du. The trademark application was filed on December 10, 2020 and the trademark was registered on November 30, 2021 for goods and services in International Classes 1 (“Chemicals used in industry”), 35 (“On-line wholesale and retail store services featuring chemicals, chemical building blocks, and reference compounds products”, and 42 (“Chemical analysis; chemical engineering; chemical research; custom design and development of chemical reagents and biochemical assays; testing of chemicals; working on and evaluation of chemical syntheses”).

The trademark certificate indicates claimed first use dates of February 8, 2011, for the Class 1 goods and February 8, 2020, for the Class 35 and 42 services.

This trademark certificate further states: “The mark consists of the wording "ACHEMBLOCK" and "ADVANCED CHEMBLOCKS INC" written in a stylised font in two horizontal lines, where the wording "ACHEMBLOCK" is located above the wording "ADVANCED CHEMBLOCKS INC", and a stylised image of an incomplete rhombus located at the left side of the wording”.

The certificate also contains the following disclaimer: “No claim is made to the exclusive right to use the following apart from the mark as shown: "ADVANCED CHEMBLOCKS INC"”.

The Panel will hereinafter refer to this trademark as the “Trademark” or the “Complainant’s Trademark”.

In addition, the Complainant asserts that it has used the signs “Advanced Chemblocks”, “Achemblock”, “A Chemblock”, and “ACHEMBLOCK ADVANCED CHEMBLOCKS INC” in commerce over an extended period of time. The Panel understands the Complainant to be asserting common law or unregistered trademark rights in these signs.

Finally, the Complainant submits that it is the licensed user of the domain name <achemblock.com>, which was registered by Mr. Hongwang Du in 2009 and has allegedly been used by the Complainant since that time.

The disputed domain name <aablocks.com> was registered on November 22, 2017. The domain name is currently used in connection with an active website operated under the name “AA Blocks, Inc.”, which appears to be affiliated with the Respondent, AA Blocks LLC.

FACTS ASSERTED BY THE COMPLAINANT:

The Complainant states that it is a California-based company operating under the name “Advanced Chemblocks, Inc.” since 2009 and active in the field of chemical products and related services.

The Complainant further submits that it is the licensed user of the Trademark identified above pursuant to a declaration executed by the trademark owner, Mr. Hongwang Du. The Complainant also claims common law or unregistered trademark rights in the signs “Advanced Chemblocks”, “Achemblock”, “A Chemblock”, and “ACHEMBLOCK ADVANCED CHEMBLOCKS INC”, allegedly used in commerce since at least 2011. In addition, the Complainant states that it has used the domain name <achemblock.com> since 2009.

FACTS ASSERTED BY THE RESPONDENT:

The Respondent submits that it has operated a legitimate business in California under the name “AA Blocks” since 2017 and that the disputed domain name has continuously been used in connection with that business. The Respondent states that it is active in the chemical industry and that its principal, Mr. Branden Lee, has worked in the chemical sector for more than twenty-five years.

COMPLAINANT’S CONTENTIONS

The Complainant contends that the disputed domain name is confusingly similar to its registered Trademark and alleged unregistered trademarks because it incorporates the dominant element “blocks”, while the omission of the term “chem” does not avoid confusion. According to the Complainant, the prefix “aa” may be understood as an abbreviation of “ACHEMBLOCK ADVANCED CHEMBLOCKS”, thereby reinforcing an association with the Complainant.

The Complainant further argues that the Respondent lacks rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the disputed domain name is being used to create the false impression of an affiliation with the Complainant, relying on alleged similarities between the parties’ websites, their operation in the same industry, and evidence of alleged actual confusion. The Complainant also emphasizes that it had allegedly established unregistered trademark rights before the registration of the disputed domain name and that both parties operate in California. According to the Complainant, the Respondent is neither commonly known by the disputed domain name nor making legitimate non-commercial or fair use of it.

As regards bad faith, the Complainant submits that it had operated under the name “Advanced Chemblocks, Inc.” and used the domain name <achemblock.com> for many years before the registration of the disputed domain name in 2017. The Complainant argues that the Respondent intentionally selected a domain name resembling the Complainant’s marks and used it for a website allegedly similar to the Complainant’s website in order to confuse Internet users for commercial gain. The Complainant further relies on the Respondent’s use of a privacy service and argues that the disputed domain name was registered in anticipation of the Complainant’s nascent trademark rights.

In its supplemental filing, the Complainant submitted a declaration by Mr. Hongwang Du together with supporting documents, arguing that this material demonstrates that the Respondent had knowledge of the Complainant and its business for a considerable period of time. In particular, the Complainant points to purchase orders dating from 2019 showing that the Respondent purchased products from the Complainant, which, according to the Complainant, contradicts the Respondent’s claim that it was unaware of the “Achemblock” brand when registering the disputed domain name. The Complainant further argues that a company operating in California under a similar name would reasonably have conducted searches for potentially conflicting trademarks.

RESPONDENT’S CONTENTIONS

The Respondent contends that the disputed domain name is not confusingly similar to the Complainant’s Trademark. According to the Respondent, the Complainant’s Trademark is weak because the terms “chem blocks” are descriptive within the chemical industry, while the trademark registration itself contains a disclaimer regarding the wording “ADVANCED CHEMBLOCKS INC”. The Respondent submits that the domain name was selected because it combines the descriptive industry term “blocks” with the letters “AA”, used as a business identifier, and that the absence of the terms “chem” and “advanced” sufficiently distinguishes the domain name from the Complainant’s Trademark.

The Respondent further argues that it has rights or legitimate interests in the disputed domain name because it corresponds to its company name and has been used since 2017 in connection with a bona fide business in the chemical industry. The term “blocks” is commonly used descriptively in the industry, and many other companies use the term in their corporate names or domain names. The Respondent also points to its long-standing commercial use of the domain name through its website, sales activities, and listings on chemical platforms. It denies having copied the Complainant’s website or branding and contends that any similarities between the parties’ websites reflect common industry practices rather than targeting of the Complainant.

As regards bad faith, the Respondent submits that none of the circumstances set out in paragraph 4(b) of the Policy are present and there is no other evidence of its bad faith. The Respondent maintains that it did not register the domain name to sell it to the Complainant, prevent the Complainant from registering a corresponding domain, disrupt the Complainant’s business, or create confusion with the Complainant’s Trademark. According to the Respondent, the domain name was chosen because of the descriptive term “blocks” combined with “AA” and because it corresponds to the Respondent’s company name, rather than to target the Complainant. The Respondent further contends that it had no knowledge of the Complainant when it registered the domain name in 2017 and that the dispute is, in essence, a broader trademark dispute falling outside the scope of the UDRP.

In its supplemental filing, the Respondent argues that the additional evidence submitted by the Complainant relates to transactions that occurred years after the registration of the domain name and therefore does not demonstrate targeting at the time of registration. The Respondent reiterates that the domain name reflects common industry use of the term “blocks”, notes that the Complainant’s own invoices continue to use the name “Advanced Chemblocks, and maintains that the disputed domain name has been used in connection with a legitimate business since 2017.

The Complainant has not shown the disputed domain name to be identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has not shown the Respondent to lack rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has not shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Both Parties submitted supplemental filings. While supplemental filings are generally discouraged (see sec. 4.6 of WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”)), the Panel has exercised its discretion to admit and consider both of the supplemental submissions in rendering this decision. The Panel accepts the supplemental filings of both parties for the sake of completeness and finds them relevant for its findings on Reverse Domain Name Hijacking.

Trademark rights and Confusing similarity

The Complainant provided evidence that it is a licensee (licensed user) of the Trademark.

Licensees and affiliates of trademark owners generally have standing to file UDRP complaints when there is relevant evidence of licensees’/affiliates’ rights/connection to the trademark owner, see sec. 1.4 of WIPO Overview 3.1. Therefore, the Panel accepts that the Complainant has rights in the Trademark for the purpose of the Policy. The disputed domain name consists of the elements “aa” and “blocks”, together with the generic Top-Level Domain (“gTLD”) “.com”, which may be disregarded for the purpose of the comparison under the first element of the Policy.

The Complainant’s Trademark is a device mark comprising the wording “ACHEMBLOCK” and “ADVANCED CHEMBLOCKS INC”.

While the confusing similarity test under the UDRP is rather flexible and Panels normally find confusing similarity when a mark is recognizable within the disputed domain name, the test still requires comparison between the complainant’s trademark and the disputed domain name, see sec. 1.7 of WIPO Overview 3.1. While confusing similarity under the UDRP is a lower threshold than the likelihood of confusion test in typical trademark infringement proceedings, it is a higher one than mere similarity.

The Panel is not persuaded that the Complainant’s Trademark is recognizable within the disputed domain name. The domain name incorporates only the word “blocks”, which forms part of the Complainant’s Trademark. The Panel does not consider it self-evident that the term “blocks” constitutes the dominant or distinctive element of the Trademark, particularly in light of the Respondent’s evidence that the term is commonly used in the chemical industry as a reference to chemical building blocks.  Significantly, this descriptive character was effectively acknowledged by the Complainant itself through the declaration of Mr. Hongwang Du, stating that “In the chemical supply industry, “Blocks” commonly refers to chemical building blocks, as described in respondent’s documents.”.

The disputed domain name does not incorporate the additional textual elements of the Complainant’s Trademark, including “ACHEMBLOCK”, “ADVANCED”, “CHEM”, or “INC”.

The Panel further considers that the prefix “AA” contributes to differentiating the disputed domain name from the Complainant’s Trademark and does not appear to constitute an obvious abbreviation of “ACHEMBLOCK” and “ADVANCED”, as argued by the Complainant.

The Panel also notes that the trademark registration expressly contains the disclaimer: “No claim is made to the exclusive right to use the following apart from the mark as shown: "ADVANCED CHEMBLOCKS INC".”

The Panel’s conclusion is not altered by the Complainant’s asserted unregistered trademark rights in the signs “Advanced Chemblocks”, “Achemblock”, “A Chemblock”, and “ACHEMBLOCK ADVANCED CHEMBLOCKS INC”.

Accordingly, the Panel finds that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

Rights or legitimate interests

In light of the Panel’s finding that the Complainant has failed to establish the first element under paragraph 4(a) of the Policy, the Panel is not required to address the remaining elements. Nevertheless, for the sake of completeness, the Panel sets out its conclusions under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

Under paragraph 4(a)(ii) of the Policy, the overall burden of proof rests with the Complainant. However, panels have long recognized that requiring a complainant to prove a negative may be difficult. Accordingly, it is generally sufficient for a complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, after which the burden of production shifts to the respondent to demonstrate relevant rights or legitimate interests. The overall burden of proof nevertheless remains with the complainant.

In the present case, the Panel finds that the Complainant has failed to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in any event, the Respondent produced sufficient evidence of its rights and legitimate interests under sec. 4 (c) (i) and 4 (c) (ii) of the UDRP.

The Panel is not persuaded that the mere inclusion of the term “blocks” in the domain name necessarily refers to the Complainant, particularly in light of the declaration submitted by the owner of the Complainant’s Trademark acknowledging that “blocks” is commonly used in the chemical industry as a reference to chemical building blocks. The Complainant’s own evidence, therefore supports the conclusion that the term has a broader descriptive meaning within the sector.

Importantly, the Respondent has provided evidence that it has operated a business under the name “AA Blocks” since 2017, including use of that name on the website associated with the domain name.

Furthermore, the Panel does not consider the alleged similarities between the parties’ websites persuasive. The fact that both parties operate in the same industry, are located in California, use common website sections such as “Products”, “Support”, and “About Us”, or use email addresses containing “@sales”, reflects ordinary commercial and industry practice and does not establish that the Respondent lacks rights or legitimate interests in the domain name.

The fact that both businesses operate in a similar industry and may be competing does not negate the Respondent’s legitimate interests when there is no evidence that the Respondent targeted the Complainant with the intent to take unfair commercial advantage or otherwise abused the Complainant’s trademark.

The Panel does not see any evidence of impersonation or any evidence that the Respondent’s business is not genuine or otherwise pretextual, given the information and evidence provided by the Respondent.

In these circumstances, the Panel considers that the Respondent registered and has used the domain name in connection with its own business activities, independently of the Complainant.

The Panel finds that the Respondent established his legitimate interest under sec. 4 (c) (i) and 4 (c) (ii) of the Policy.

Accordingly, the Panel finds that the Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

Bad faith

The Panel notes that the disputed domain name consists of the elements “aa” and “blocks”, corresponding to the business and corporate name “AA Blocks” used by the Respondent since 2017.  According to the Complainant’s own evidence, including the declaration of Mr. Hongwang Du, the term “blocks” is commonly used in the chemical industry to refer to chemical building blocks. In these circumstances, the Panel does not consider that the Respondent’s use of the term “blocks” in the disputed domain name necessarily refers to the Complainant or is, in itself, indicative of bad faith.

The Respondent has also provided evidence that other entities in the chemical sector use the term “blocks” in connection with similar products or services.

Moreover, the Complainant has not provided sufficient evidence regarding the scope, reputation, or distinctiveness of its registered Trademark or alleged unregistered trademarks, nor any convincing explanation as to why the Respondent should be prevented from using the descriptive term “blocks” in the domain name.

The Panel also finds no persuasive evidence that the Respondent intentionally targeted the Complainant or sought to disrupt the Complainant’s business. There is no evidence that the Respondent used the Complainant’s Trademark (or its claimed unregistered trademarks), referred to the Complainant on its website, or otherwise attempted to impersonate the Complainant. Nor is the Panel persuaded that the prefix “AA” in the domain name constitutes an abbreviation of any mark, brand, or name used by the Complainant.

The Panel does not consider the Respondent’s use of a domain privacy or proxy service, in itself, to constitute evidence of bad faith, particularly in the circumstances of the present case, where such services may also serve legitimate privacy or administrative purposes.

Finally, the Panel notes that the Complainant’s registered Trademark postdates the registration of the disputed domain name and that the trademark registration itself contains an express disclaimer stating that no exclusive rights are claimed in the wording “ADVANCED CHEMBLOCKS INC” apart from the mark as shown.

The fact that both parties are from California does not automatically result in the Respondent’s acting in bad faith when the name adopted consists of common industry terms, the disputed domain name corresponds to the business name of the Respondent’s company and when there is no evidence of targeting at the time the disputed domain name was registered in 2017.

In these circumstances, the Panel finds that the Complainant has failed to provide sufficiently persuasive evidence establishing any of the circumstances set out in paragraph 4(b) of the Policy, or any other indicia of bad-faith registration and use.

Accordingly, the Panel concludes that the Complainant has failed to establish that the disputed domain name was registered or is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

REVERSE DOMAIN NAME HIJACKING (RDNH)

According to Paragraph 15(e) of the Rules, “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Sec. 4.16 of WIPO Overview 3.1 provides some examples of RDNH scenarios and panels generally hold that a represented complainant should be held to a higher standard.

In the circumstances of the present case, the Panel finds that the Complaint constitutes Reverse Domain Name Hijacking.

The cumulative effect of several factors supports such a conclusion.

In particular, the Complainant’s registered Trademark postdates the registration of the disputed domain name, while the trademark registration itself contains an express disclaimer regarding the relevant word elements. The record further demonstrates widespread descriptive use of the term “blocks” – the only term of the Complainant’s Trademark used in the domain name - within the relevant industry, a circumstance acknowledged by the Complainant’s own evidence and declaration. The Panel also considers that several of the Complainant’s arguments were strained in nature, including the alleged “striking similarity” between the parties’ websites based largely on commonplace website terminology, generic structural elements, or ordinary conventions such as the use of email addresses containing “@sales”.

The Panel finds that the professionally represented Complainant should have appreciated that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint, including information on the Respondent’s website indicating Respondent’s legitimate interests as a bona fide business owner, and the professionally represented Complainant unreasonably ignored established Policy precedents, including established case law and consensus views expressed in WIPO Overview 3.1.

The fact that the parties operate in the same sector and appear to be commercial competitors further suggests that the present dispute is more akin to a business or trademark dispute than a clear case of cybersquatting within the intended scope of the UDRP.

The Panel further notes that the Complaint was accompanied by more than 200 annexes, in addition to further annexes submitted with the supplemental filing, many of which were cumulative or of limited relevance to the issues requiring determination under the Policy.

While parties are entitled to substantiate their claims, the volume and nature of the materials submitted by the professionally represented Complainant in the present case are difficult to reconcile with the streamlined and summary character of UDRP proceedings, which are intended to provide an efficient mechanism for resolving clear cases of cybersquatting.

In light of the above, the Panel finds that the Complaint constitutes an abuse of the administrative proceeding and amounts to Reverse Domain Name Hijacking.