Lenovo (Beijing) Limited Corporation China v. John Wang
Claim Number: FA1410001586484
Complainant is Lenovo (Beijing) Limited Corporation China (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is John Wang (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kenovo.com>, <zenovo.com>, and <menovo.com>, registered with Godaddy.Com, LLC.
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.
Beatrice Onica Jarka 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 24, 2014 and October 27, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <kenovo.com>, <zenovo.com>, and <menovo.com> domain names registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, 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 October 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@kenovo.com, postmaster@zenovo.com, postmaster@menovo.com. Also on October 31, 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.
A timely Response was received and determined to be complete on November 20, 2014.
On November 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
· the LENOVO mark is used to promote computer components and electronic devices.
· Complainant’s mark is registered with the likes of the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,149,377 registered Sept. 26, 2006, filed Feb. 20, 2003).
· The disputed domain names <kenovo.com>, <zenovo.com>, and <menovo.com> domain names all vary from the mark by a single letter.
· Respondent has no rights or legitimate interests in the disputed domain names <kenovo.com>, <zenovo.com>, and <menovo.com> domain names, as it has never been commonly known by any of these names and each of the domain names is being used to promote advertising content.
· Respondent registered and is using the domain name in bad faith.
· Respondent is disrupting Complainant’s commercial enterprise through its use of the domain names.
· There is a likelihood of confusion as between Respondent’s content on the disputed domain names and Complainant’s LENOVO brand, a likelihood through which Respondent may profit.
· Respondent is profiting through typosquatting conduct.
Respondent’s Contentions
B. Respondent
Respondent claims that it derives no profits from the domain names and has only registered them because they are geographic terms for cities/villages in Russia. The Panel notes the <kenovo.com>, <zenovo.com>, and <menovo.com> domain names were registered on February 26, 2004.
The Complainant holds a famous trademark Lenovo, which was replicated by the Respondent with the only difference of changing the first letter of the trademark.
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.
Complainant uses the LENOVO mark to identify its computer hardware, computer software, and electronic component business. The LENOVO mark has been registered with national trademark registrars, including the USPTO (e.g., Reg. No. 3,149,377, registered Sept. 26, 2006, filed Feb. 20, 2003). The Panel finds this USPTO registration to satisfy Policy ¶ 4(a)(i)’s required showing of rights in a trademark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); 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 claims that the <kenovo.com>, <zenovo.com>, and <menovo.com> domain names all include common misspellings of the LENOVO mark. The Panel agrees that each of the domain names varies from the mark by (1) adding the gTLD “.com,” and (2) substituting a single character in the mark itself. The Panel finds that neither of these alterations are sufficient under Policy ¶ 4(a)(i). See, e.g., Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); 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.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Therefore the Panel finds that the Complainant satisfied the first element of the Policy.
As established in UDRP practice of administrative Panels, the 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.”).
Complainant first alleges that the facts do not suggest Respondent has ever been commonly known by any of the domain names. The Panel notes how “Domain Admin / Private Registrations Aktien Gesellschaft” is listed as the registrant of record for each and all of the disputed domain names. As such, the Panel finds Respondent is not known by these disputed domain names under 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).
Complainant further alleges that all of the <kenovo.com>, <zenovo.com>, and <menovo.com> domain names resolve to websites promoting hyperlink advertising. The Panel notes Exhibit H, wherein one can see the domain names resolve to pages with advertisements. The Panel agrees that advertising these GoDaddy.com, LLC advertisements does not create a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not 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).”); see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Therefore, the Panel concludes that the Complainant has proved the second element of the Policy.
Complainant argues that Respondent is disrupting Complainant’s commercial enterprise through its use of the domain names. The Panel notes that some of the advertisements promoted in Exhibit H include promotions that refer to the sale of laptop computers. As this Panel finds such advertisements to be sufficiently competitive to the LENOVO mark, the Panel concludes that Respondent has disrupted Complainant’s business in Policy ¶ 4(b)(iii) bad faith. 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)).
Complainant claims that there is a likelihood of confusion as between Respondent’s content on the disputed domain names and Complainant’s LENOVO brand, a likelihood through which Respondent may profit. The Panel notes again how the domain names are used to promote the sale of various goods, including laptop computers. See Compl., at Attached Ex. H. This Panel finds this advertising to be suggestive of Respondent’s intent to profit from Internet users’ confusion in Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that Respondent is profiting through typosquatting conduct while the Respondent claims that its use of the domain name was innocent because each of the terms used in the domain names are actually geographic terms (Respondent provides Annexes showing that each of the <kenovo.com>, <zenovo.com>, and <menovo.com> domain names could be cities in Russia)
The Panel agrees that typosquatting is the act of registering a domain name solely because it capitalizes on a very common or subtle misspelling of a trademark. See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Analyzing the disputed domain names one by one the Panel reaches the following conclusions:
It is very likely to consider <kenovo.com> and <menovo.com> domain names as typosquats as they could be seen as common or obvious misspelling of the Complainant s trademark Lenovo. Notwithstanding the previous paragraph, the Panel also notes that the letters "L" and "K" are situated side by side on a QWERTY computer keyboard, which, in the opinion of the Panel, constitutes an additional element that increases the confusing similarity between the disputed domain name <kenovo.com> and the Complainant trademark Lenovo. The same reasoning is valid also for letters "L" and "M" which, even if they are not situated side by side on a QVERTY computer keyboard, they are very close to eachother to make possible a mistyping of the Complainant’s trademark Lenovo by an average internet consumer.
As for the <zenovo.com> disputed domain name, even if, at a first sight, may not be considered a typosquatting as letters “L" and "Z” are quite faraway from each other on a QWERTY keyboard, considering the registration of the series of typoasquating and using all the three disputed domain name with the same content of website, this Panel is inclined to consider that, also, for this domain name it is a clear indication of the bad faith registration and use in the sense of Policy ¶ 4(a)(iii)
Therefore, the Panel finds that the Complainant had proven also the third element under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <kenovo.com>, <zenovo.com>, and <menovo.com> domain names be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka Panelist
Dated: December 10, 2014
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