PC Pitstop, LLC v. limadou c/o ma lixin
Claim Number: FA1212001476153
Complainant is PC Pitstop, LLC (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, Iowa, USA. Respondent is limadou c/o ma lixin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pcmaticreviews.com>, registered with Jiangsu Bangning Science & Technology Co. 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2012; the National Arbitration Forum received payment on December 17, 2012. The Complaint was submitted in both Chinese and English.
On December 18, 2012, Jiangsu Bangning Science & Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <pcmaticreviews.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & Technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. 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 December 19, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 8, 2013 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@pcmaticreviews.com. Also on December 19, 2012, the Chinese language 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 January 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions:
1. Complainant creates, markets, and distributes computer software that both diagnoses common computer problems and optimizes computer performance.
2. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PC MATIC mark (Reg. No. 3,827,600 registered August 3, 2010).
3. Respondent registered the <pcmaticreviews.com> domain name on September 26, 2011.
4. Respondent’s <pcmaticreviews.com> domain name is confusingly similar to Complainant’s PC MATIC mark.
5. Respondent has no rights or legitimate interests in respect of the domain name;
6. There is no evidence to suggest that Respondent has been commonly known
by the <pcmaticreviews.com> domain name.
7. Complainant has no association with Respondent and has never authorized or licensed Respondent’s use of Complainant’s mark.
8. The domain name has been registered and is being used in bad faith.
9. As of September 26, 2011, the <pcmaticreviews.com> domain name resolved to a website displaying an image of a comparison table purporting to compare the products offered by Complainants competitors. The comparison table was in fact a single image, such that clicking on any part of the table or what appeared to be a button would open an executable software file allowing the user to download software which competed with Complainant’s software, namely PC Cleaner Pro.
10. Respondent’s website also contained the misleading statement “Is PCMatic a Scam? You Better Read This Before You Download PCMatic, Here’s What We Found!” When clicked upon, this message also opened an executable software file ready for download.
11. On or around November 12, 2012, Respondent’s website was updated by removing the statement “Is PCMatic a Scam? You Better Read This Before You Download PCMatic, Here’s What We Found!” as well as replacing the image table with a table that allowed users to download products that compete with those offered by Complainant.
12. Complainant subsequently sent Respondent a series of cease and desist letters, after each of which the site was taken down but put back up shortly thereafter.
13. Respondent is a competitor of Complainant, as it distributes a similar optimization software within the same industry as Complainant. Respondent has registered two other domain names that compete with Complainant: <finallyfast-pc.com> and <fastpcoptimizer.com>.
14. Respondent profits from click-through fees it collects once any of the links on its site are accessed and/or benefits from another form of commercial relationship in directing Complainant’s existing and potential customers to its competitors.
15. Respondent was aware of Complainant and its business when Respondent registered the <pcmaticreviews.com> domain name.
a. Respondent is a competitor, promoting competing software products
b. Complainant is a well-known and major participant in the PC optimization industry
16. Respondent’s website has been taken down repeatedly by host providers due to its infringement and fraudulent nature.
17. Respondent has now moved its website to China, as it is notoriously difficult to take down websites there.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant creates, markets, and distributes computer software that both diagnoses common computer problems and optimizes computer performance.
2.Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PC MATIC mark (Reg. No. 3,827,600 registered August 3, 2010).
3.Respondent registered the <pcmaticreviews.com> domain name on September 26, 2011.The domain name resolves to a website that has been promoting by various improper means the services of competitors of the Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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(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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights in the PC MATIC mark under Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (Reg. No. 3,827,600 registered August 3, 2010). The Panel notes that previous panels have recognized USPTO registration as conferring rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel finds that Complainant has established rights in the PC MATIC mark under Policy ¶ 4(a)(i), despite the fact that Respondent lives in China. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PC MATIC mark. Complainant notes that the “dominant and distinctive” part of the disputed domain name is Complainant’s PC MATIC mark. Complainant asserts that the incorporation of the term “reviews” and the addition of a generic top-level domain (“gTLD”) do not distinguish the <pcmaticreviews.com> domain name from Complainant’s PC MATIC mark. The Panel also notes that the disputed domain name eliminates the space between words in Complainant’s mark. Upon examination of UDRP precedent, the Panel concludes that Respondent’s <pcmaticreviews.com> domain name is confusingly similar to Complainant’s PC MATIC mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). In particular, the addition of the word “reviews” to the PC MATIC trademark would engender in the mind of the objective bystander that the domain name was an official domain name of Complainant leading to an official website of Complainant dealing with reviews of its PC Matic product, neither of which is true.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PC MATIC mark and to use it in its domain name, adding only the descriptive word “reviews”, which can only convey to the internet user that the domain name relates to the product of Complainant produced under its PC MATIC mark and that the domain name will lead to a website dealing with the same subject, neither of which is true;
(b) Respondent has then used the domain name to link to a website constructed in such a way that it undermines Complainant’s business and promotes the products of Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that there is no evidence to suggest that Respondent has been commonly known by the <pcmaticreviews.com> domain name, and provides that it has no association with Respondent and has never authorized or licensed Respondent’s use of its PC MATIC mark. The Panel notes that the WHOIS information for the contested domain name identifies Respondent as “limadou c/o ma lixin.” In light of the foregoing evidence, the Panel determines that Respondent is not commonly known by the <pcmaticreviews.com> domain name as envisioned by 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);
(e) Complainant also contends that Respondent has not used the <pcmaticreviews.com> domain name in accordance with 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). Complainant claims that as of September 26, 2011 Respondent used the <pcmaticreviews.com> domain name to resolve to a website displaying an image of a comparison table purporting to compare the computer optimization products offered by Complainant’s competitors, but that this comparison table was in fact a single image, such that clicking on any part of the table or what appeared to be a button thereon would open an executable software file that allowed the user to download computer optimization software which competed with Complainant’s software, namely PC Cleaner Pro. Complainant claims that Respondent’s website also contained the misleading statement “Is PCMatic a Scam? You Better Read This Before You Download PCMatic, Here’s What We Found!,” which when clicked upon, also opened an executable software file ready for download. Complainant posits that Respondent profits from click-through fees it collects once any of the links on its site are accessed, and/or Respondent benefits from another form of commercial relationship in directing Complainant’s existing and potential customers to its competitors. The Panel finds that Respondent has used Complainant’s PC MATIC mark to profit from improperly redirecting Internet users to Respondent’s site. As the Panel so finds, the Panel holds that Respondent has not used the <pcmaticreviews.com> domain name in accordance with 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent’s registration and use of the <pcmaticreviews.com> domain name disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). Complainant claims that Respondent is a competitor of Complainant, as it distributes similar optimization software within the same industry as Complainant. Complainant also claims that Respondent has registered two other domain names that are used to compete with Complainant: <finallyfast-pc.com> and <fastpcoptimizer.com>. The Panel agrees that Complainant and Respondent do in fact offer competing computer optimization software-related goods and services. As a competitor, the Panel finds that Respondent’s registration and use of a domain name containing Complainant’s mark constitutes bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant alleges that Respondent’s registration and use of the <pcmaticreviews.com> domain name exhibits attraction for commercial gain, evidencing bad faith pursuant to Policy ¶ 4(b)(iv). Complainant urges that Respondent’s use of Complainant’s mark in the disputed domain and on the resolving website demonstrates Respondent’s intent to associate itself wrongfully with Complainant. Complainant claims that Respondent profits from click-through fees it collects once any of the links on its site are accessed, and/or Respondent benefits from another form of commercial relationship in directing Complainant’s existing and potential customers to its competitors. The Panel infers that Respondent’s registration and use of the <pcmaticreviews.com> domain suggests an attempt to associate itself with Complainant, and that Respondent’s realization of commercial gain from its website suggests that this implied association was motivated by such commercial gain. As a result, the Panel concludes that Respondent’s registration and use of the <pcmaticreviews.com> domain name exhibits attraction for commercial gain, proving bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant further alleges that Respondent was aware of Complainant and its business when Respondent registered the <pcmaticreviews.com> domain name, noting that Respondent is a competitor of Complainant given Respondent’s promotion of competing software products and that Complainant is a well-known and major participant in the PC optimization industry. The Panel notes that although panels have not generally regarded constructive notice to be sufficient to support a finding of bad faith, actual knowledge of Complainant's mark and rights have typically supported a finding of bad faith under Policy ¶ 4(a)(iii). As the Panel finds that Respondent had actual knowledge of Complainant and its rights in the PC MATIC mark at the time Respondent registered the <pcmaticreviews.com> domain name, the Panel finds Respondent to have registered and used the disputed domain in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the PC MATIC mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pcmaticreviews.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 18, 2013
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