CommScope, Inc. of North Carolina v. jennifer alonso
Claim Number: FA2005001896560
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is jennifer alonso (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscope.site>, registered with NameCheap, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2020; the Forum received payment on May 15, 2020.
On May 17, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <commscope.site> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 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@commscope.site. Also on May 19, 2020, 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 June 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, CommScope, Inc., offers a wide range of services, including broadband solutions, enterprise solutions, and wireless solutions, and creates the infrastructure that connects people and technologies. Complainant has rights in the COMMSCOPE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,865,198, registered Nov. 29, 1994).
2. Respondent’s <commscope.site>[i] domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s COMMSCOPE mark, adding only the “.site” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <commscope.site> domain name. Respondent is not licensed or authorized to use Complainant’s COMMSCOPE mark and is not commonly known by the domain name.
4. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent does not have a website at the resolving webpage of the disputed domain name.
5. Respondent registered and uses the <commscope.site> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site.
6. Respondent fails to make active use of the domain name.
7. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the COMMSCOPE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COMMSCOPE mark. Respondent’s domain name is confusingly similar to Complainant’s COMMSCOPE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <commscope.site> domain name and that Respondent registered and uses the domain name 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:
(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 rights in the COMMSCOPE mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 1,865,198, registered Nov. 29, 1994). Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of its registration of the COMMSCOPE mark with the USPTO; therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <commscope.site> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s COMMSCOPE mark, adding only the “.site” gTLD. The addition of a gTLD does not negate any confusing similarity between a domain name and mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”). Thus, the <commscope.site> domain name is identical and/or confusingly similar to the COMMSCOPE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <commscope.site> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <commscope.site> domain name because Respondent is not licensed or authorized to use Complainant’s COMMSCOPE mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See H - D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. 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). The WHOIS information of record notes “Jennifer Alonso” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the COMMSCOPE mark in any way. Thus, the Panel holds that Respondent is not commonly known by the <commscope.site> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <commscope.site> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent does not have a website that resolves from the domain name. Failure to make active use of a domain name that incorporates the mark of another does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)”). Complainant has provided a screenshot of Respondent’s inactive web page. The Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <commscope.site> domain name in bad faith. Specifically, that Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant claims Respondent has created a likelihood of confusion with Complainant and its trademarks by registering a domain that entirely incorporates Complainant’s COMMSCOPE mark, and giving the impression that interested individuals will receive information regarding Complainant, when in fact, users are sent to an inactive webpage. The Panel agrees with Complainant and finds that Respondent registered and uses the <commscope.site> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent fails to make an active use and is passively holding the domain name. Failure to make an active use of a domain name incorporating the mark of another is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name”). Complainant provides screenshots showing that the <commscope.site> domain name resolves to an inactive website. Therefore, Respondent’s inactive use of the disputed domain name indicated bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the COMMSCOPE mark when registering the <commscope.site> domain name. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can be shown by use of a confusingly similar domain name in direct competition with a complainant. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant has shown that Respondent must have had actual knowledge of Complainant’s rights due to the notoriety of the COMMSCOPE mark, Respondent’s use of the mark in its entirety, and Complainant’s long standing use of the mark. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <commscope.site> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 18, 2020
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