I.P. Holdings, Inc., GSM, LLC and Stealth Cam, LLC v. Wang Shaopeng
Claim Number: FA1104001381534
Complainant is I.P. Holdings, Inc., GSM, LLC and Stealth Cam, LLC (“Complainant”), represented by Srikant Viswanadham, Texas, USA. Respondent is Wang Shaopeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stealthcam.com>, registered with FABULOUS.COM PTY 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2011; the National Arbitration Forum received payment on April 1, 2011.
On April 4, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <stealthcam.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY 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 April 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2011 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@stealthcam.com. Also on April 5, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <stealthcam.com> domain name is identical to Complainant’s STEALTH CAM mark.
2. Respondent does not have any rights or legitimate interests in the <stealthcam.com> domain name.
3. Respondent registered and used the <stealthcam.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, I.P. Holdings, Inc., GSM, LLC and Stealth Cam, LLC, operate a business specializing in the sale of video cameras, still cameras, and self-automated surveillance camera that can be deployed to gather photographs in remote locations. Complainant, Stealth Cam, LLC, is a licensee of I.P. Holdings, Inc. Complainant GSM, LLC, oversees the distribution of photography products under Complainant I.P. Holdings, Inc.’s STEALTH CAM mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,333,076 filed June 1, 2001; issued November 13, 2007). The Panel finds that the relationship between the parties is sufficient and elects to treat the Complainants as a single entity for the purposes of these proceedings.
Respondent, Wang Shaopeng, registered the <stealthcam.com> domain name on December 24, 2004. The disputed domain name resolves to a website featuring links to third-party websites that compete with Complainant’s camera business.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts rights in the STEALTH CAM mark based on its registration of the mark with the USPTO (e.g., Reg. No. 3,333,076 filed June 1, 2001; issued November 13, 2007). The Panel finds that federal trademark registration is sufficient for establishing rights in the mark pursuant to Policy ¶ 4(a)(i). Furthermore, the Panel finds that Respondent’s rights in the mark date back to the filing date for the STEALTH CAM mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant contends that Respondent’s <stealthcam.com> domain name is identical to Complainant’s STEALTH CAM mark. Respondent merely removed the space between the terms of Complainant’s mark and added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that removing the space between the terms of a mark and incorporating a gTLD do not remove a domain name from the realm of confusing similarity with Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first establish that Respondent lacks rights and legitimate interests in the <stealthcam.com> domain name. Once Complainant makes a prima facie showing in support of its allegation, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(ii) and because Respondent failed to respond to these proceedings, the Panel may accept all reasonable allegations made by Complainant. However, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent is not authorized to use the STEALTH CAM mark. Respondent has not alleged any evidence, nor can the Panel find anything in the record that would support a finding that Respondent is commonly known by the <stealthcam.com> domain name. Furthermore, the WHOIS information lists the registrant of the disputed domain name as “Wang Shaopeng” which Complainant alleges is not similar to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The <stealthcam.com> domain name resolves to a website that is being used to display hyperlinks to a variety of websites that compete with Complainant’s camera business. The Panel presumes that Respondent receives click-through fees from these links and determines that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant contends that Respondent is using the disputed domain name to intentionally attract Internet users to its website displaying links to third-party competitor websites of Complainant’s camera business. Internet users searching for and intending to find Complainant’s products may be misled by Respondent’s confusingly similar domain name and may end up purchasing products from Complainant’s competitors. The Panel finds that Respondent’s use of the <stealthcam.com> domain name disrupts Complainant’s business and pursuant to Policy ¶ 4(b)(iii), finds that Respondent has engaged in bad faith registration and use of the disputed domain name. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent used the disputed domain name to divert Internet users, through hyperlinks, to Respondent’s website resolving from the disputed domain name. Because of this redirection, Complainant contends that Internet users are confused as to Complainant’s sponsorship and affiliation with the hyperlinks posted on the website resolving from the disputed domain name. The Panel presumes that Respondent receives click-through fees for this redirection of unsuspecting Internet users. Therefore, the Panel concludes, pursuant to Policy ¶ 4(b)(iv), that Respondent has engaged in bad faith registration and use of the disputed domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stealthcam.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 29, 2011
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