Lenovo (Beijing) Limited Corporation China v. shaun hedges / accueil des solutions inc
Claim Number: FA1410001586479
Complainant is Lenovo (Beijing) Limited Corporation China (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is shaun hedges / accueil des solutions inc (“Respondent”), British Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lenonvo.com> and <lenov0.com>, registered with Moniker Online Services LLC.
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 October 23, 2014; the National Arbitration Forum received payment on October 23, 2014.
On October 28, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <lenonvo.com> and <lenov0.com> domain names are registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 November 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2014 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@lenonvo.com, and postmaster@lenov0.com. Also on November 3, 2014, 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 December 3, 2014, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant sells personal computers and related electronic goods under the LENOVO mark. The LENOVO mark has been registered with authorities such as the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,149,377, registered Sept. 26, 2006). Both of the <lenonvo.com> and <lenov0.com> domain names are confusingly similar to LENOVO in that they misspell that mark.
Respondent has no rights or legitimate interests in the <lenonvo.com> and <lenov0.com> domain names. Respondent is not commonly known by the <lenonvo.com> and <lenov0.com> domain names, nor has Respondent received Complainant’s authority to trade upon the LENOVO mark. The <lenonvo.com> and <lenov0.com> domain names are used for purposes of promoting various products, including unrelated goods and Complainant’s own products.
Respondent registered and is using the <lenonvo.com> and <lenov0.com> domain names in bad faith. Respondent is holding out both of the disputed domain names for sale. Further, Respondent is hosting competing offers on the domain names’ websites that create commercial disruption. These competing and unrelated hyperlinks, featured heavily on the <lenonvo.com> and <lenov0.com> domain names’ websites, allow Respondent to profit through a likelihood of confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent company with its principal place of business being Beijing, Peoples Republic of China and it is engaged in the personal computer market and related electronic goods. It sells its products under the LENOVO mark.
2. The LENOVO mark has been registered with authorities such as the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,149,377, registered Sept. 26, 2006).
3. The <lenonvo.com> and <lenov0.com> domain names were registered on December 6, 2005.
4. The <lenonvo.com> and <lenov0.com> domain names are used for purposes of promoting various products, including unrelated goods and Complainant’s own products.
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 sells personal computers and related electronic goods under the LENOVO mark. The LENOVO mark has been registered with authorities such as the USPTO (e.g., Reg. No. 3,149,377, registered Sept. 26, 2006). The Panel concludes that the registration of this mark with the USPTO is sufficient evidence of Policy ¶ 4(a)(i) rights here. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s LENOVO mark. Complainant argues that both of the <lenonvo.com> and <lenov0.com> domain names are confusingly similar to LENOVO in that they simply misspell the mark. The Panel agrees that the slight misspelling of the mark embodied in each of the domain names is insufficient to avoid a finding of Policy ¶ 4(a)(i) confusing similarity here. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
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 names 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 taken Complainant’s LENOVO trademark and used it in its <lenonvo.com> and <lenov0.com> domain names with slight misspellings;
(b) Respondent has then used the domain names for purposes of promoting various products, including unrelated goods and Complainant’s own products;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent is not commonly known by the <lenonvo.com> and <lenov0.com> domain names, nor has Respondent received Complainant’s authority to trade upon the LENOVO mark. The Panel notes that “Shaun Hedges” is listed as the registrant of record for these domain names. The Panel agrees that there is nothing in the record to suggest Respondent has been known by either of the <lenonvo.com> or the <lenov0.com> domain name under 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 argues that the <lenonvo.com> and <lenov0.com> domain names are used for purposes of promoting various products, including unrelated goods and Complainant’s own products. The Panel takes note that the domain names resolve to websites that predominately promote LENOVO products, with the links leading to more generically phrased computer-related ads. See Compl., at Attached Ex. H. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that no bona fide offering had been made when the domain name resolved to a website promoting a range of related and competing goods. Here the Panel concludes that Respondent is without Policy ¶ 4(c)(i) bona fide offerings, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses of the disputed domain names.
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent is holding out both of the disputed domain names for sale. To support this claim, Complainant has provided copies of the available WHOIS information, wherein there appears an overt offer to purchase the respective domain names. See Compl., at Attached Ex. I. In Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002), the panel held that the general promotion of domain-name-for-sale was suggestive of Policy ¶ 4(b)(i) bad faith. Here the Panel finds the offers made with respect to these domain names is evidence of bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent is hosting competing offers on the domain names’ websites that create commercial disruption. The Panel agrees that the promotions on the domain names’ websites (as seen in Exhibit H) are competitive enough to create a Policy ¶ 4(b)(iii) bad faith commercial disruption. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Thirdly, Complainant believes that these competing and unrelated hyperlinks, featured heavily on the <lenonvo.com> and <lenov0.com> domain names’ websites, allow Respondent to profit through a likelihood of confusion. See Compl., at Attached Ex. H. As the Panel agrees that such a likelihood of confusion is apparent in the use of the domain names, the Panel finds Policy ¶ 4(b)(iv) bad faith. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Fourthly, Complainant further claims that Respondent’s typosquatting behavior is evidence of bad faith in itself. The Panel recalls that the disputed domain names differ from the LENOVO mark by a single inserted or substituted character. As the Panel agrees that Respondent’s registration of such names amounts to typosquatting, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Indep. Ins. Agents & Brokers of Am., Inc. v. Liqian, FA 1582252 (Nat. Arb. Forum Nov. 10, 2014) (“Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string […] Respondent’s typosquatting is, in itself, evidence of Policy ¶ 4(a)(iii) bad faith.”).
Finally, 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 names using the Complainant’s trademark and its subsequent use of the disputed domain names, Respondent registered and used them 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 <lenonvo.com> and <lenov0.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 4, 2014
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