Lenovo (Beijing) Limited Corporation China v. jeonggon seo
Claim Number: FA1411001591638
Complainant is Lenovo (Beijing) Limited Corporation China (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is jeonggon seo (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lenivo.com>, registered with HANGANG SYSTEMS,INC. D/B/A DOREGI.COM.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2014; the National Arbitration Forum received payment on November 24, 2014. The Complaint was received in both English and Korean.
On December 4, 2014, HANGANG SYSTEMS,INC. D/B/A DOREGI.COM confirmed by e-mail to the National Arbitration Forum that the <lenivo.com> domain name is registered with HANGANG SYSTEMS,INC. D/B/A DOREGI.COM and that Respondent is the current registrant of the name. HANGANG SYSTEMS,INC. D/B/A DOREGI.COM has verified that Respondent is bound by the HANGANG SYSTEMS,INC. D/B/A DOREGI.COM 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 10, 2014, the Forum served the Korean language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@lenivo.com. Also on December 10, 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 January 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses LENOVO to identify its personal computers and related electronic goods. Complainant has registered the LENOVO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,149,377, registered Sept. 26, 2005, filed Feb. 20, 2003). The <lenivo.com> domain name is confusingly similar to the LENOVO mark as it incorporates a misspelled version of the mark and affixes the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor does Complainant share any affiliation with Respondent. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the <lenivo.com> domain name to redirect users to a website featuring click-through links, some of which compete with Complainant’s offerings.
iii) Respondent has a history of bad faith as evidence by prior UDRP decision and this history of cybersquatting illustrates Policy ¶ 4(b)(i) bad faith in the current case. Further, Respondent’s use of the disputed domain name to promote links in competition with Complainant’s own computer offerings disrupts Complainant’s business and warrants a finding under Policy ¶ 4(b)(iii). In addition, as Respondent generates revenue from the competing links resolving from the <lenivo.com> domain name, Policy ¶ 4(b)(iv) is implicated. Lastly, Respondent’s <lenivo.com> domain name is a typosquatted version of the LENOVO mark. Typosquatting is emblematic of Policy ¶ 4(a)(iii) bad faith.
B. Respondent
Respondent did not submit a response. The disputed domain name was registered December 13, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making Korean the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall 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.”).
Complainant explains that it uses LENOVO to identify its personal computers and related electronic goods, and argues that it has rights in the mark for purposes of Policy ¶ 4(a)(i) as it has registered the LENOVO term with trademark authorities. The Panel notes that Complainant has registered the LENOVO mark with the USPTO (Reg. No. 3,149,377, registered Sept. 26, 2005, filed Feb. 20, 2003). Prior panels have determined that USPTO registrations sufficiently demonstrate a complainant’s rights in the mark, and that such rights date back to the relevant filling date. See 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”). Presently, the Panel finds Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful.
Complainant argues that the <lenivo.com> domain name is confusingly similar to the LENOVO mark as it incorporates a misspelled version of the mark and affixes the gTLD “.com.” The Panel notes that the disputed domain name specifically substitutes the initial letter “o” in the mark for the letter “i.” The Panel determines that this minor alteration in spelling is insufficient to distinguish the domain name from the otherwise incorporated mark, and that the affixation of “.com” is irrelevant to the confusing similarity analysis. See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited, FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”); 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.”). Accordingly, the Panel finds Policy ¶ 4(a)(i) satisfied.
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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and urges that it does not share any affiliation with Respondent. The Panel notes that the WHOIS information identifies “jeonggon seo” as the registrant of record. As the available evidence provides no nexus between Respondent and the <lenivo.com> domain name, the Panel refuses to consider Respondent commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant goes on to argue that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends that Respondent uses the <lenivo.com> domain name to redirect users to a website featuring click-through links, some of which compete with Complainant’s offerings. The Panel notes that the resolving links include “Lenovo Laptops,” “Buy a Laptop,” and “Business Laptop Computers.” See Compl., at Attached Ex. H. The Panel finds that Respondent is not using the disputed domain name in furtherance of a bona fide offering of goods or services under Policy ¶ 4(a)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(a)(i), as the confusingly similar domain name resolves to promote commercial links both related to a competing with Complainant. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 Respondent’s history of cybersquatting illustrates Policy ¶ 4(b)(i) bad faith in the current case. Complainant points the Panel to several UDRP cases where Respondent was found to have engaged in bad faith registration and use. See Compl., at Attached Ex. N; Adorama Inc. v. jeonggon seo, FA 1508789 (Nat. Arb. Forum Aug. 26, 2013); AGIP LLC v. Jeonggon Seo, FA 1428545 (Nat. Arb. Forum Mar. 9, 2012); The Gap, Inc. v. jeonggon seo, FA 1504399 (Nat. Arb. Forum July 19, 2013). The Panel agrees that these prior UDRP decisions constitute a pattern of bad faith under Policy ¶ 4(b)(ii), which pervades the instant case. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Further, Complainant argues that Respondent’s use of the disputed domain name to promote links in competition with Complainant’s own computer offerings disrupts Complainant’s business and requests a finding under Policy ¶ 4(b)(iii). The Panel recalls that the disputed domain name resolves to promote computer related links including “Buy a Laptop,” and “Business Laptop Computers.” See Compl., at Attached Ex. H. As Complainant operates in the computer industry, the Panel determines that such links compete with Complainant, and therefore finds Respondent is disrupting Complainant’s offerings in violation of Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant next claims that a finding of bad faith under Policy ¶ 4(b)(iv) is warranted as Respondent generates revenue from the competing links resolving from the <lenivo.com> domain name. See Compl., at Attached Ex. N. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) in this instance as Respondent is using the disputed domain name to direct users to Complainant and its competitors, and likely commercially benefiting in the process. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Lastly, Complainant claims that Respondent’s <lenivo.com> domain name is a typosquatted version of the LENOVO mark, and argues that typosquatting is emblematic of Policy ¶ 4(a)(iii) bad faith. The Panel recalls that the disputed domain name differs from the LENOVO mark by the substitution of a single letter, namely swapping the initial “o” for an “i.” The Panel agrees that such behavior amounts to typosquatting, and use this finding as further evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lenivo.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 16, 2015
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