Lenovo (Beijing) Limited Corporation China v. Lin yanxiao / yanxiao lin
Claim Number: FA1411001589992
Complainant is Lenovo (Beijing) Limited Corporation China (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Lin yanxiao / yanxiao lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lenovoo.com>, registered with Threadwalker.com, Inc.
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 November 14, 2014; the National Arbitration Forum received payment on November 14, 2014.
On November 20, 2014, Threadwalker.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lenovoo.com> domain name is registered with Threadwalker.com, Inc. and that Respondent is the current registrant of the name. Threadwalker.com, Inc. has verified that Respondent is bound by the Threadwalker.com, 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 November 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@lenovoo.com. Also on November 21, 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 18, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the LENOVO mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,149,377, registered Sept. 26, 2006). Complainant uses the mark in connection with computers and related software and equipment. The <lenovoo.com> domain name is confusingly similar to the LENOVO mark as the domain name adds an extra “o” to the end of the mark, and attaches the non-distinct generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights in the disputed domain name. Respondent is not commonly known by the <lenovoo.com> name, nor does Respondent have any authorization from Complainant to use the LENOVO mark. Respondent has failed to use the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent instead uses the subject domain name in connection with a pay-per-click website featuring links to competitors of Complainant.
Respondent registered and has used the disputed domain name in bad faith. To start, Respondent’s bad faith is shown through its willingness to sell this disputed domain name. Further, Respondent has a history of bad faith as demonstrated by prior UDRP proceedings, which informs the Panel’s analysis at present. In addition, Respondent’s use of the <lenovoo.com> domain name to promote links that compete with Complainant’s computer-related offerings is indicative of bad faith disruption. Similarly, the use of such commercial links through the confusingly similar domain name evinces Policy ¶ 4(b)(iv) bad faith. Finally, Respondent has registered a common misspelling of the LENOVO mark, which constitutes typosquatting and is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of computers and related software and equipment.
2. Complainant owns the LENOVO mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,149,377, registered Sept. 26, 2006).
3. The disputed domain name was registered July10, 2014.Respondent uses the domain name in connection with a pay-per-click website featuring links to competitors of Complainant.
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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the mark in connection with computers and related software and equipment. Complainant submits that it owns the LENOVO mark through registration with the USPTO (Reg. No. 3,149,377, registered Sept. 26, 2006). Despite Respondent’s residence in China, the Panel concludes that Complainant’s USPTO registration serves to satisfy the rights requirement of Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LENOVO mark. Complainant argues that the <lenovoo.com> domain name is confusingly similar to the LENOVO mark as the domain name adds an extra “o” to the end of the mark, and attaches the non-distinct gTLD “.com.” Prior panels have concluded that such alterations fail to negate confusing similarity. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”); Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel finds that the <lenovoo.com> domain name is confusingly similar to the LENOVO mark pursuant to Policy ¶ 4(a)(i), as the addition of single repeated letter and gTLD fail to distinguish the domain name from the wholly included mark.
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 LENOVO mark and to use it in its domain name and has simply added the letter “o” which does not detract from the confusing similarity that is otherwise clearly present;
(b) Respondent registered the disputed domain on July 10, 2014;
(c) Respondent uses the domain name in connection with a pay-per-click website featuring links to competitors of Complainant;
(d) Complainant argues that Respondent lacks rights in the disputed domain name. Complainant asserts that Respondent is not commonly known by the <lenovoo.com> name, nor does Respondent have any authorization from Complainant to use the LENOVO mark. The Panel notes that Respondent failed to submit a response to rebut any of these contentions. Further, the Panel observes that the WHOIS record lists “Lin yanxiao” as registrant. Given the available evidence, the Panel finds no reason to deem Respondent commonly known by the <lenovoo.com> name for purposes of 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);
(e) Complainant argues that Respondent has failed to use the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant asserts that Respondent uses the subject domain name in connection with a pay-per-click website featuring links to competitors of Complainant. The Panel notes that Complainant has included a screen shot of the resolving page, available for review at Complainant’s Exhibit H. The resolving page includes links relating to Complainant such as “Lenovo Laptop Deals,” as well as links to products in competition with Complainant’s computer offerings, such as “Top 7 Laptops on Sale,” and “Cheap Deals on Laptops.” See Compl., at Attached Ex. H. As the <lenovoo.com> domain name is used to promote links to Complainant and competitors of Complainant, the Panel agrees that Respondent has failed to use the domain name in connection with a bona fide offering of goods or services as described in Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use as protected by Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor 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 argues that Respondent’s bad faith is shown through its willingness to sell this disputed domain name. Complainant notes the associated WHOIS listing advertises the disputed domain name for sale in the amount of $2,000. Prior panels have determined that a respondent’s general offer to sell the disputed domain name for an amount in excess of out-of-pocket costs is indicative of Policy ¶ 4(b)(i) bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel agrees that Respondent’s offer to sell this disputed domain name for $2,000 is evidence that Respondent registered the disptued domain name for the primary purpose of selling the name for profit, and therefore find Policy ¶ 4(b)(i) is implicated.
Secondly, Complainant notes that Respondent has a history of bad faith as demonstrated by prior UDRP proceedings, and argues that Respondent’s past informs the Panel’s analysis at present. See Compl., at Attached Ex. N; Webster Financial Corp. and Western Bank, Nat’l Ass’n v. Lin yanxiao / yanxiao lin, FA 1575278 (Nat. Arb. Forum Sept. 16, 2014). Prior panels have determined that prior UDRP decisions against a respondent are sufficient to satisfy the pattern requirement of Policy ¶ 4(b)(ii), and therefore can implicate bad faith in the instant case. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel finds evidence of Policy ¶ 4(b)(ii) bad faith here, as Respondent has a demonstrated pattern of registering infringing domain names.
Thirdly, Complainant claims that Respondent’s use of the <lenovoo.com> domain name to promote links that compete with Complainant’s computer-related offerings is indicative of bad faith disruption. The Panel recalls that the subject landing page features links such as “Top 7 Laptops on Sale,” and “Cheap Deals on Laptops.” See Compl., at Attached Ex. H. The Panel agrees that such links contain the requisite degree of competition espoused in Policy ¶ 4(b)(iii), and concludes that Respondent’s disruptive use of the domain name falls within the conduct proscribed by the provision. 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)).
Fourthly, Complainant argues Respondent’s use of such commercial links through the confusingly similar domain name evince Policy ¶ 4(b)(iv) bad faith. Prior panels have found evidence of bad faith where the respondent uses a confusingly similar domain name to feature links in competition with the complainant. For example, in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “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).” At present, the Panel recalls that the disputed domain name resolves to promote both links to Complainant and Complainant’s competitors. See Compl., at Attached Ex. H. As Respondent presumably profits via click-through fees generated from such links, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith.
Fifthly, Complainant argues that Respondent has registered a common misspelling of the LENOVO mark, which constitutes typosquatting and is further evidence of bad faith. The Panel recals that the disputed domain name differs from the mark by the addition of a repeated “o” to the end of the mark . The Panel agrees that such behavior constitutes typosquatting, and finds this to be additional evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and use of the disputed domain name using the LENOVO mark, Respondent registered and used it 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 <lenovoo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 21, 2014
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