Winncom Technologies Corp. v. David Graves
Claim Number: FA1206001447605
Complainant is Winncom Technologies Corp. (“Complainant”), represented by Haifeng Hong of Porter Wright Morris & Arthur LLP, Ohio, USA. Respondent is David Graves (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <winncomm.com>, registered with TUCOWS, INC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2012; the National Arbitration Forum received payment on June 14, 2012.
On June 7, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <winncomm.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 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@winncomm.com. Also on June 18, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: WINNCOM, which has been used by the Complainant for distributorship services in the field of telecommunications and wireless communications technology equipment.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] [Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The domain name WINNCOMM.COM is confusingly similar to the Complainant's trademark WINNCOM. The Complainant has been receiving feedbacks from its vendors who mistakenly believed the domain name WINNCOMM.COM is associated with the Complainant's business.
[b.] [Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.] UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The Respondent has no rights or legitimate interests in respect of the domain name WINNCOMM.COM. The Complainant has been using the trademark WINNCOM since 1996. The Complainant registered its domain name WINNCOM.COM since October 31, 1996. The Respondent registered the domain name WINNCOMM.COM on December 10, 2011. However, as of the time when the Complaint is filed, the Respondent has not developed a simple website that is hosted under said domain name.
In addition, the Complainant has received the information from its vendors that the Respondent has frequently attempted to place orders by holding himself/herself out as an associate of the Complainant. The Respondent even intentionally attempted to commit fraudulent purchases by holding himself/herself out as someone named Bernie Vaysenberg, who actually was a former associate of the Complainant, using the email bernie@winncomm.com and the credit letter containing the Complaint's corporate information. It is clear that the Respondent intentionally attempts to commit fraud by using the domain name WINNCOMM.COM, which was registered by the Respondent purposefully to be confusingly similar to the Complainant's trademark WINNCOM.
Therefore, the Respondent's use of the domain name in issue is not for a bona fide offering of goods or services, nor does the use constitute a legitimate noncommercial or fair use. For the foregoing reasons, the Complainant believes that the Respondent has no rights or legitimate interests in respect of the domain name WINNCOMM.COM.
[c.] [Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith.] UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
The domain name WINNCOMM.COM should be considered as having been registered and being used in bad faith. The Respondent has frequently attempted to place orders by holding himself/herself out as an associate of the Complainant. The Respondent even intentionally attempted to commit fraudulent purchases by holding himself/herself out as someone named Bernie Vaysenberg, who actually was a former associate of the Complainant, using the email bernie@winncomm.com and the credit letter containing the Complaint's corporate information.
By using the domain name WINNCOMM.COM, Respondent has intentionally attempted to commit fraudulent purchases, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark WINNCOM as to the source, sponsorship, affiliation, or endorsement of the Respondent’s fraudulent purchases.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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(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.”).
Complainant has presented the Panel with its trademark registration for the WINNCOM TECHNOLOGIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,571,857 registered February 10, 2009). Complainant’s registration of the mark with the USPTO adequately establishes Complainant’s rights in the mark under Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO).
Complainant argues the <winncomm.com> domain name is confusingly similar to Complainant’s WINNCOM TECHNOLOGIES mark under Policy ¶4(a)(i). The disputed domain name adds an “m” to the dominant term of Complainant’s mark, “WINNCOM,” while omitting the term “TECHNOLOGIES” and adding the generic top-level domain (“gTLD”) “.com.” Affixing a gTLD is never relevant to “confusingly similar” analysis because a gTLD is required of all domain names. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”). Respondent’s omission of a term in Complainant’s mark does not necessarily remove the disputed domain name from the realm of confusing similarity. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).
In this case, Complainant alleges actual confusion and has produced evidence to substantiate the claim. Respondent’s misspelling of the term “WINNCOM,” adding an extra “m,” is not sufficient to distinguish the <winncomm.com> domain name from Complainant’s mark for the purposes of Policy ¶4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information for the <winncomm.com> domain name identifies the domain name registrant as “David Graves.” There is no similarity between this name and the <winncomm.com> domain name. Respondent has failed to satisfy its burden of providing the Panel with a Response in this case, meaning there is no evidence in the record to suggest Respondent is commonly known by the disputed domain name for the purposes of Policy ¶4(c)(ii). In light of these findings, the Panel concludes Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends Respondent’s use of the <winncomm.com> domain name cannot be considered a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Complainant claims Respondent is using the website at the disputed domain name in a scheme to fraudulently hold itself out as an associate of Complainant (or actually Complainant). Complainant has received information from its vendors that Respondent has frequently attempted to place orders by holding itself out as someone named “Bernie Vaysenberg,” a former associate of Complainant, using a letter containing Complainant’s corporate information. Respondent’s use of the disputed domain name in connection with a scheme to fraudulently hold itself out as an associate of Complainant is not 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 Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of the <winncomm.com> domain name to hold itself as an associate of Complainant to make purchases on Complainant’s credit constitutes attraction for commercial gain, which is evidence of bad faith under Policy ¶4(b)(iv). Complainant has presented the Panel with correspondences with various vendors indicating Respondent attempted to make purchases under Complainant’s name using Complainant’s credit. Complainant claims Respondent’s registration of a confusingly similar domain name was calculated to create a likelihood of confusion with Complainant’s mark (and company). Complainant further claims Respondent’s attempts to make fraudulent purchases were motivated by the prospect of commercial gain. Based upon the information presented, the Panel agrees. Respondent’s registration and use of the <winncomm.com> domain name constitutes bad faith under Policy ¶4(b)(iv). See 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 Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <winncomm.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 17, 2012
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