Maxim Integrated Products, Inc. v. Missie Carter
Claim Number: FA1905001841450
Complainant is Maxim Integrated Products, Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Missie Carter (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maximintregrated.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2019; the Forum received payment on May 1, 2019.
On May 2, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <maximintregrated.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 May 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2019 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 postmaster@maximintregrated.com. Also, on May 2, 2019, the 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the MAXIM mark, designs, manufactures and sells integrated circuits.
Complainant holds a registration for the MAXIM trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,337,707, registered as of May 28, 1985, and renewed most recently as of March 14, 2015.
Complainant also has common law rights in the mark MAXIM INTEGRATED through its long and continuous exclusive and extensive use of the mark throughout the world, as a consequence of which the MAXIM INTEGRATED mark has acquired substantial commercial value and distinctiveness.
Respondent registered the domain name <maximintregrated.com> on November 3, 2018.
The domain name is confusingly similar to Complainant’s MAXIM and MAXIM INTEGRATED marks.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant.
Respondent has not been licensed or otherwise authorized to use Complainant’s MAXIM or MAXIM INTEGRATED marks.
Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Instead, the disputed domain name resolves to a web page that features third-party links to the websites of business enterprises, and that the operation of those links generates pay-per-click revenue for the benefit of Respondent.
The domain name is an instance of typo-squatting.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the MAXIM and MAXIM INTEGRATED marks when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the MAXIM trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example. BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of its mark with the USPTO adequately proved its rights in that mark under Policy ¶ 4(a)(i)).
Complainant also claims rights in the MAXIM INTEGRATED mark adequate for purposes of Policy ¶ 4(a)(i) under the common law by reason of its long and continuous exclusive and extensive use of the mark throughout the world, as a consequence of which the MAXIM INTEGRATED mark has acquired substantial commercial value and distinctiveness. Respondent, for its part, does not contest this assertion. Accordingly, it appears from the record that Complainant has established rights in the mark MAXIM INTEGRATED adequate to meet the threshold requirements of Policy ¶ 4(a)(i). See, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (finding that a UDRP complainant demonstrated its common law rights in a mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <maximintregrated.com> domain name is confusingly similar to Complainant’s MAXIM trademark. The domain name incorporates the mark in its entirety, with only the addition of a misspelled version of the term “integrated,” which is a part of Complainant’s enterprise name, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).
See also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum August 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds [to the mark] the letter ‘i’....”).
Further see Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
It should go without saying that, when the domain name is considered on the point of confusing similarity in light of Complainant’s MAXIM INTEGRATED mark, the conclusion detailed above applies perforce because the only meaningful difference between that mark and the <maximintregrated.com> domain name is the addition of a fugitive letter “r.”
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <maximintregrated.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the disputed domain name <maximintregrated.com>, and that Complainant has not licensed or otherwise authorized Respondent to use either of the MAXIM or MAXIM INTEGRATED marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Missie Carter,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <maximintregrated.com> domain name, in that Respondent uses the domain name to resolve to a web page that features third-party links to the websites of business enterprises, and that the operation of those links generates pay-per-click revenue for the benefit of Respondent. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum April 26, 2017) (finding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites, unrelated to the business of a UDRP complainant, and presumably for the purpose of generating pay-per-click fees, did not support a finding of rights to or legitimate interests in the domain name in favor of that respondent under the provisions of Policy ¶¶ 4(c)(i) or (iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the contested <maximintregrated.com> domain name, which we have found to be confusingly similar to both of Complainant’s MAXIM and MAXIM INTEGRATED marks, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (finding that a respondent acted in bad faith under Policy ¶ 4(b)(iv) where it registered and used a disputed domain name to host a variety of hyperlinks, unrelated to a UDRP complainant’s business, through the operation of which that respondent presumably gained commercially).
We are also convinced by the evidence that the <maximintregrated.com> domain name is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in order to take advantage of common spelling errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting is, without more, independent evidence of Respondent’s bad faith in the registration and use of the domain name. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding that a respondent engaged in typosquatting — and thus registered and used disputed domain names in bad faith — where the names consisted of a UDRP complainant’s mark with small typographical errors).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the MAXIM and MAXIM INTEGRATED marks at the time Respondent registered the <maximintregrated.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding bad faith registration of a challenged domain name where a respondent was shown to have had actual knowledge of a UDRP complainant and its rights in the confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is ORDERED that the <maximintregrated.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 30, 2019
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