Seagate Technology LLC v. Xifan Sun
Claim Number: FA1003001311538
Complainant is Seagate
Technology LLC (“Complainant”), represented by Richard Stockton, of Banner
& Witcoff, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <segate.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.
On March 7, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <segate.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2010 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 email@example.com. Also on March 9, 2010, 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.
A timely Response was received and determined to be complete on March 29, 2010.
On April 2, 2010, the Forum received a timely Additional Submission from Complainant which has been fully considered.
On April 13, 2010, Additional Submission was received from Respondent, which was not timely. The submission was not considered, as discussed below.
On April 2, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it holds a trademark in the word SEAGATE, which is a trademark used by Seagate Technology, LLC. SEAGATE is a trademark for various services including magnetic disk drives (“hard” drives). Complainant asserts that Seagate is one of the world’s leading manufacturers of such product. Complainant alleges that Respondent “Xifan Sun” of the Republic of China has registered the <segate.com> domain name and that this constitutes a violation of the “Rules for Uniform Domain Dispute Resolution Policy” because mistyping “Seagat” as “Segate” accesses Respondent’s website. The website then generates “click through” “income from advertisers on the Respondent’s website. Says Complainant, “this business model is called ‘typo-squatting.’”
First, Complainant asserts that the <segate.com> domain name is confusingly similar to its trademark. It argues that the only difference is the addition of an “a” and that the two terms and words are phonetically identical. This, says Complainant, means that the Respondent’s domain name is “identical to or confusingly similar” to Complainant’s mark.
Further, Complainant asserts that Respondent has no rights to the trademark name Seagate and that nothing indicates that Respondent is commonly known by the name “Segate.”
Again, Complainant argues that this constitutes typo-squatting and asserts case law under the Rules and Policy making typo-squatting actionable.
Complainant goes on to assert bad faith, arguing the generation of “click through fees” by diversion of Internet users from Complainant’s website, containing third party links, is evidence of bad faith.
Complainant also asserts that Respondent had actual or constructive notice of the existence of the relatively well-known mark.
In its response, Respondent assets that Complainant has no trademark rights in the word “Segate.” The Respondent asserts that these are not identical, and that “Seagate” and “Segate” are not confusingly similar.
Further, Respondent asserts that the contents of the website demonstrate that the contents are not confusingly similar and Respondent has provided a screenshot of the two websites. Respondent goes on to assert that, under Chinese law, common terms do not generate exclusive trademark rights. Respondent also asserts that Complainant has not shown that “SEAGATE” is a mark recognized by the PRC
As to the rights of the name, Respondent notes that it applied to register the domain name on September 27, 2000. Respondent says that the right of prior use and prior registration demonstrates that it has rights in the name.
Finally, Respondent denies any bad faith and asserts that Complainant’s evidence is not sufficient to demonstrate bad faith.
Respondent states that it relies primarily on the principal of prior registration and prior application.
C. Additional Submissions
Complainant’s Additional Submissions states that first Respondent changed the content of its website after the complaint was filed so that the “click through” content was altered.
Seagate goes on to assert that the allegations made by Respondent concerning Chinese law are incorrect.
In addition to a number of other allegations, Complainant notes that Respondent does not deny the widespread use and significance of Complainant’s mark.
Complainant notes that Respondent does not dispute that it is not commonly known by the name “Seagate” or “Segate.” Again, Complainant asserts that Respondent is “typo-squatting.”
In the conclusion of its additional submission, Complainant again asserts bad faith and offers, as additional evidence of bad faith, removal of references to Segate’s technology from the references on the website.
Respondent’s Additional Submission was not received timely and, in fact, was received after the Panelist had submitted a Decision. Ordinarily, the Panelist considers late submissions. In this case, because the Panelist had completed his work, the Panelist has not considered the late filed submission.
The panel finds that SEAGATE is a well-known trademark and the evidence is clear that the trademark gives Complainant exclusive use to the trademark on almost a world-wide basis. Respondent’s discussions of Chinese law are not persuasive.
Further, Complainant has submitted evidence of bad faith. The “click through revenues” are sufficient under the ICANN Policy to demonstrate bad faith and the alteration of the webpage after the Complaint was filed is additional evidence.
As to rights in the name, the evidence is clear that “Xifan Sun” is guilty of “typo-squatting.” The general rule that is developed in domain name disputes is that “typo-squatting” similar to what has gone on in this domain registration is actionable and reflects that Respondent lacks rights or legitimate interests in the domain name in question. See LTD Commodities, L.L.C. v. The Party Night, Inc., FA 165155 (Nat. Arb. Forum, Aug. 14, 2003); see also IndyMac Bank FSB v. Ebeyer, FA 175292 (Nat. Arb. Forum, Sept. 19, 2003).
Given the facts as set forth by Complainant and the response filed by Respondent, it is clear that the domain name in question violates the ICANN Policy and Rules.
The “prior registration and prior use” argument must fail in light of the relatively famous mark involved and the clear link from the <segate.com> domain name to the sale of goods and services like those of Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel concludes that the mark and the domain name are identical or confusingly similar. Phonetically, the mark and the domain name are pronounced identically. The deletion of the “a” in the domain name is not significant. The confusing similarity is demonstrated by the Respondent’s use of the domain name to generate “click through revenue.”
The Respondent clearly has no rights in the name other than the first registration and use. However, the SEAGATE trademark long pre-dates the registration of the <segate.com> domain name. Therefore, the first registration and use is not determinative.
Complainant has clearly demonstrated Respondent’s bad faith and the use of the confusing similarity to generate Internet traffic and Internet driven revenue by exploitation of the SEAGATE mark. This is sufficient evidence of bad faith. Compounding the evidence of bad faith is Respondent’s alteration of the links and advertising on the domain name page subsequent to the filing of the 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 <segate.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Date: April 16, 2010
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