Seagate Technology LLC v. Jano Kerekes / Poste Restante
Claim Number: FA1503001610699
Complainant is Seagate Technology LLC (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Jano Kerekes / Poste Restante (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laciefuel.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2015; the Forum received payment on March 20, 2015. The Complaint was submitted in both English and Slovak.
On March 27, 2015, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <laciefuel.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.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 April 3, 2015, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of April 23, 2015 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@laciefuel.com. Also on April 3, 2015, the Slovak 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses the LACIE mark in connection with apparatus for processing information and data, namely hard discs, floppy discs, magnetic-optical disks, optical juke-boxes, cartridges, optical readers, DAT copies, CD-ROM players and recorders; rewritable CD-ROM players; computers; and others. Complainant has registered the LACIE mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA601,874, registered February 11, 2004), demonstrating rights in the mark. Respondent’s <laciefuel.com> domain name is confusingly similar to the LACIE mark because the domain name incorporates the mark fully and adds the term “fuel” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <laciefuel.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to register any variation of the LACIE mark. Instead of making a bona fide offering of goods or services or any legitimate noncommercial or fair use of the <laciefuel.com> domain name, Respondent’s site redirects Internet users to sites which offer services that directly compete with Complainant’s business and engage in “mouse-trapping.”
Respondent is using the <laciefuel.com> domain name in bad faith. Respondent’s use of competing hyperlinks which direct Internet users to competitors of Complainant, while presumably gaining click-through fees is evidence of bad faith under Policy ¶ 4(b)(iii). Further, Respondent’s inclusion of hyperlinks which purportedly resolve to competitors of Complainant to possibly achieve economic benefit constitutes bad faith under Policy ¶ 4(b)(iv). Respondent’s “mouse-trapping” behavior with regards to one of the resolving pages of the <laciefuel.com> domain name is also evidence of bad faith. Finally, Respondent had actual and/or constructive knowledge of the LACIE mark and Complainant’s rights in the mark prior to registering the <laciefuel.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Slovak, thereby making Slovak the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant is Seagate Technology LLC of Cupertino, CA. Complainant is the owner of numerous foreign and domestic registrations for the mark LACIE which Complainant, and its predecessor entity, have used continuously since at least as early as 2004 in connection with the sale of data storage devices, software and related services.
Respondent is Jano Kerekes / Poste Restante, of Bratislava, Slovakia. Respondent’s registrar’s address is listed as Shanghai, China. The Panel notes that the <laciefuel.com> domain name was registered on or about February 7, 2014.
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 uses the LACIE mark in connection with apparatus for processing information and data, namely hard discs, floppy discs, magnetic-optical disks, optical juke-boxes, cartridges, optical readers, DAT copies, CD-ROM players and recorders; rewritable CD-ROM players; computers; and others. Complainant purports to have registered the LACIE mark with the CIPO (e.g., Reg. No. TMA601,874, registered February 11, 2004), arguing such demonstrations evince rights in the mark. Prior panels have held that trademark registrations with a governing authority or agency demonstrate a complainant’s rights in a mark within a Policy ¶ 4(a)(i) analysis. See Cactus Rests. Ltd. v. Web Master, FA 671297 (Nat. Arb. Forum May 23, 2006) (“The Panel should not “second guess” the Patent Offices of Canada and the USA to say that Cactus Club should not have been registered as a trademark.”). The Panel here finds that Complainant has established Policy ¶ 4(a)(i) rights in the mark.
Complainant argues that Respondent’s <laciefuel.com> domain name is confusingly similar to the LACIE mark because the domain name incorporates the mark fully and adds the term “fuel” and the generic top-level domain (“gTLD”) “.com.” Previous panels have decided that similar alterations to a mark were insufficient to overcome a finding of confusing similarity per Policy ¶ 4(a)(i). See Napster, Inc. v. Mededovic, D2005-1263 (WIPO Jan. 17, 2006) (finding confusing similarity where “[t]he disputed domain name comprises the highly distinctive NAPSTER trademark itself, combined with the suffix “togo.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel here finds that Respondent’s <laciefuel.com> domain name is confusingly similar to the LACIE mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <laciefuel.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to register any variation of the LACIE mark. In light of the available WHOIS information and the fact that Respondent has failed to provide any evidence for the Panel’s consideration, the Panel finds that Respondent is not commonly known by the <laciefuel.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant further argues that instead of making a bona fide offering of goods or services or any legitimate noncommercial or fair use of the <laciefuel.com> domain name, Respondent’s site redirects Internet users to sites which offer services that directly compete with Complainant’s business and engage in “mouse-trapping.” Complainant’s exhibits reflect hyperlinks which include “Computer Hardware”, “Fuel Cell”, and “Hard Drive Recovery Service”, as well as “pop-ups” which evidence “mouse-trapping”. The Panel finds that such use of the <laciefuel.com> domain name constitutes neither a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s use of a competing hyperlink which directs Internet users to competitors of Complainant, while presumably gaining click-through fees is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel again notes that Complainant’s exhibits include screenshots of the pages to which the <laciefuel.com> domain name resolves. The hyperlinks to which Complainant alludes contain the language “Computer Hardware”, “Fuel Cell”, and “Hard Drive Recovery Service.” The Panel finds that the hyperlinked pages resolve to direct competitors of Complainant and that such use evinces bad faith disruption under Policy ¶ 4(b)(iii). 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 additionally contends that Respondent is likely gaining click-through fees from Internet users who come across the disputed domain name looking for Complainant’s website, thereby profiting from the goodwill associated with Complainant’s LACIE mark. The Panel finds that Respondent’s inclusion of hyperlinks which resolve to a competitor of Complainant’s to possibly achieve economic benefit constitutes bad faith under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <laciefuel.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 13, 2015
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