Arlo Technologies, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1909001862783
Complainant is Arlo Technologies, Inc. (“Complainant”), represented by Erica N Goven, Nebraska, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arlosupport.xyz>, registered with TLD Registrar Solutions Ltd..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2019; the Forum received payment on September 18, 2019.
On September 20, 2019, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <arlosupport.xyz> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 September 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@arlosupport.xyz. Also on September 24, 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 October 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. 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 any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it has rights in the ARLO trademark through its portfolio of trademark registrations described below and at common law by its extensive use, promotion, and advertisement of the ARLO trademark for at least five years during which time it has gained a significant international reputation.
Complainant submits that its significant trademark rights and goodwill in the ARLO trademark were first established by NETGEAR, Inc. Due to the success of the ARLO products, in 2018, Complainant was spun off from its parent company, NETGEAR, Inc. and became a wholly owned subsidiary harnessing its already developed international brand recognition.
Complainant submits that the disputed domain name <arlosupport.xyz> is confusingly similar to the ARLO trademark as it includes the ARLO trademark in its entirety and the only additions within the disputed domain name are the generic or descriptive word “support” and the “.xyz” top-level domain extension.
Complainant submits that in such circumstances, when a disputed domain name includes a complainant’s entire trademark and differs only by the addition of a generic or descriptive phrase and top-level domain, these elements are insufficient to differentiate one from the other. See Microsoft Corporation v. Thong Tran Thahn FA 15120001653187 (Forum January 21, 2016 citing Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH D2001-0026 (WIPO March 23, 2001). Complainant argues furthermore that the inclusion of the word “support” within the disputed domain name further aggravates the confusion between the disputed domain name and the legitimate support services offered by Complainant to its consumers support products and services online.
Furthermore, the content presented on the website to which the disputed domain name resolves presents the ARLO trademark prominently throughout the website on and in connection with Complainant’s products.
Complainant also argues that the look and feel of the content of the website to which the disputed domain name resolves and the inclusion of the ARLO trademark and ARLO products throughout the website in connection with the offering of support services creates a likelihood of consumer confusion as to the source of the disputed domain name.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name domain name asserting that it must make out a prima facie case showing that the Respondent such lacks rights or legitimate interest after which the burden of proof shifts to the Respondent to prove otherwise. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006).
Complainant submits that Respondent’s use is not in connection with a bona fide offering of goods or services; “It is well-settled that the use of another's trademark to sell competitive goods and services is an act of trademark infringement and cannot under any circumstances be considered to be a bona fide offering of goods and services.” See Ciba Specialty Chemicals Holding, Inc. v. Germciba.com D2003-0717 (WIPO November 24, 2003).
Complainant argues that Respondent is using Complainant’s ARLO trademark to attempt to mislead consumers into believing that the disputed domain name is affiliated with the Complainant. There are numerous pictures of Complainant’s prominently trademarked products throughout its website to which the disputed domain name resolves. Furthermore there are statements such as, “despite our best efforts of providing you with flawless devices, there can be chances that you might come across some problems while using our Netgear Arlo Pro security cameras,” posted on the site to portray that it is affiliated with or connected to Complainant. The disputed domain name also includes a litany of blog posts, a “toll free helpline number,” and a frequently asked questions page, all to persuade consumers to utilize the disputed domain name’s support offerings for Complainant’s products.
Complainant submits that Respondent is using the disputed domain name to divert traffic away from legitimate support offerings provided by Complainant and instead mislead consumers into receiving support from the Respondent. This cannot be considered a bona fide offering of goods or services.
Complainant submits that Respondent is not commonly known by the disputed domain name. Respondent is not a licensee, service provider, or distributor of Complainant nor is Respondent otherwise authorized to use the ARLO trademark, for any purpose. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant submits Respondent’s use of the disputed domain name does not fall within the bounds of fair use, arguing that fair use is a circumstance where a domain name in dispute is “being used in a descriptive sense to inform the public of a fact.” See Lockheed Martin Corporation v. NBPro Hosting D2003-0859 (WIPO December 18, 2003). However, “it cannot be fair use where there is no legitimate connection between the Respondent and its use of the domain name in dispute, and the Complainant and its trademarks.” Id. This is the case here.
Complainant asserts that there is no legitimate connection between the disputed domain name and the ARLO trademark; the services being offered at the disputed domain name are not authorized by the Complainant; and the fact that these support services are being offered in connection with the disputed domain name provide evidence of commercial use, which removes the defense of fair use. See Six Continents Hotels, Inc. v. Georgetown Inc. D2003-0214 (WIPO May 18, 2003).
Complainant submits that Respondent registered and is using the domain name in bad faith arguing that Respondent registered the disputed domain name on March 27, 2018. This date is long after the Complainant began selling products under the ARLO name which was at least as early as October 2014. Moreover, by the time Respondent registered the disputed domain name Complainant had already acquired trademark registrations for ARLO in Australia, Canada, China, the European Union, Japan, Norway, Switzerland, Trinidad & Tobago, and the United States. Further, ARLO is an arbitrary term which has no meaning outside its use as a means to identify Complainant as a source of certain products and services.
Complainant submits that it is clear that Respondent created and registered the disputed domain name in order to create a likelihood of confusion between the disputed domain name and the ARLO trademark since the disputed domain name incorporates in its entirety ARLO, the disputed domain name offers support services that compete with Complainant’s legitimate support offerings, and the look and feel of the content at the disputed domain name, especially Respondent’s use of “our products” and similar language when referring to Complainant’s goods and the inclusion of ARLO and ARLO marked products prominently throughout the website, creates a false affiliation between the disputed domain name and the ARLO trademark.
Moreover, the designation ARLO is unique and arbitrary such that it is unlikely that the respondent devised the disputed domain name on its own. This factor alone weighs in favor of finding bad faith against Respondent. See Neuberger Berman, Inc. D2000-0323 (WIPO Nov. 2, 2000) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith); Bigstar Entm't, Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185 (S.D.N.Y. 2000) ("…the more unique and inherently distinctive the marks, the stronger it is, and the greater the likelihood that the public may confuse a similar mark").
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of smart connected devices, including wire-free smart Wi-Fi and LTE-enabled cameras, advanced baby monitors, smart security, and audio doorbells which work in conjunction with Arlo cameras, all of which are sold throughout major international markets.
Complainant has rights in the ARLO trademark established through its ownership of a portfolio of trademark registrations in Australia, Canada, China, the European Union, Japan, Norway, Switzerland, Trinidad & Tobago, and including United States registered trademark ARLO, registration number 4906065, registered on February 23, 2016 for goods in international class 09 and services in international class 42 and the use of the mark in commerce by Complainant and its predecessor in title since at least October 2014.
Complainant also owns the domain name <arlo.com> which resolves to a website on which its goods and services are promoted and offered for sale.
The disputed domain name <arlosupport.xyz> was registered on March, 27, 2018 and resolves to a website which contains extensive use of Complainant’s trademarks and photographs of Complainant’s products.
There is no information about Respondent except for that provided in the Complaint and on the Registrar’s WhoIs.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 provided convincing evidence of its rights in the ARLO trademark established through its ownership of abovementioned portfolio of trademark registrations and the goodwill established in the mark by extensive use by Complainant and its predecessor in title since at least October 2014.
The disputed domain name consists of three elements namely Complainant’s mark in its entirety, the descriptive word “support” and the gTLD <.com> extension. As Complainant’s trademark is the first, dominant, and only distinctive element of the disputed domain name; the word “support” refers to services which Complainant supplies, or would be expected to supply in relations to its business; and the gTLD extension may be ignored for the purposes of the comparison exercise, this Panel finds that the disputed domain name <arlosupport.xyz> is confusingly similar to the ARLO mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that the disputed domain name is confusingly similar to Complainant’s trademark and asserting that Respondent is using Complainant’s mark on its website without permission; that Respondent has not been given any right or license to use the ARLO trademark for any purpose and that Respondent has no connection with Complainant.
Also, the content of Respondent’s website misrepresents Respondent as having a connection with Complainant which is incorrect. Furthermore, there is no evidence that Respondent is commonly known by the disputed domain name or is using the disputed domain name for any bona fide purposes in commerce or for any non-commercial or fair use. Complainant submits that the content of Respondent’s website is intended to misrepresent to the public that the website has a connection with Complainant
In such circumstances is well established under the Policy that the burden of proof shifts to the Respondent to establish its rights or interests.
Respondent has failed to respond to this Complaint and therefore has failed to discharge the burden of proof.
This Panel finds therefore that Respondent lacks rights or legitimate interests in the disputed domain name domain name and Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The ARLO trademark was registered on February 23, 2016 and has been used by Complainant and its predecessor in title since at least October 2014. The disputed domain name <arlosupport.xyz> was registered on March 27, 2018 and resolves to a website which references Complainant’s good and services. It is improbable therefore that the registrant of the disputed domain name was unaware of Complainant, its rights in the ARLO mark and its domain name <arlo.com> when the disputed domain name was created and registered.
The website to which the disputed domain name resolves contains content which appears to misrepresent Respondent as having at least an affiliation with Complainant and its business. Complainant asserts that this is not the case and that Respondent is using its mark and presenting photographs of Complainant’s products in such a way as to misrepresent a connection, without consent.
This Panel finds therefore on the balance of probabilities that the disputed domain name was registered in bad faith has since been used by Respondent in bad faith to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant's ARLO mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the services purported to be offered on Respondent’s website. on your website or location.”
Respondent has therefore succeeded in establishing the third element of the test in Policy ¶ 4(a)(iii) also and is therefore entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <arlosupport.xyz> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 17, 2019
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