Qualcomm Incorporated v. DOMAIN CONTROLLER / YOYO EMAIL
Claim Number: FA1506001624860
Complainant is Qualcomm Incorporated (“Complainant”), represented by Amy E. Salomon of Arent Fox LLP, District of Columbia, USA. Respondent is DOMAIN CONTROLLER / YOYO EMAIL (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qualcomm.email>, 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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2015; the Forum received payment on June 17, 2015.
On June 17, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <qualcomm.email> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@qualcomm.email. Also on June 18, 2015, 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 July 8, 2015.
Complainant’s Additional Submission was received and determined to be complete and timely on July 10, 2015.
On July 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A. Diaz (ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the QUALCOMM mark in connection with its engineering/computer related services. Complainant has registered the QUALCOMM mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,549,614, registered July 25, 1989), establishing its Policy ¶ 4(a)(i) rights in the mark. Respondent’s <qualcomm.email> is confusingly similar/identical to the QUALCOMM mark as the “.email” generic top-level domain (“gTLD”) addition is irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <qualcomm.email> domain name, nor has Complainant given Respondent authorization or permission to use its mark in the registration of a domain name. Further, Respondent is not making a bona fide offering of goods or services, or any legitimate noncommercial or fair use through the disputed domain name. Rather, Respondent seeks to incorporate the disputed domain name in a service to Internet users for recorded delivery of email and/or an email reply monitoring system, with each driven by a neutral communication platform. The disputed domain name fails to resolve to an active website, demonstrating Respondent’s failure to make an active use.
Respondent has registered and used the disputed domain name in bad faith. Respondent has been involved in many prior UDRP decisions in which he has registered famous trademarks in domain names, evidencing serial cybersquatting behavior under Policy ¶ 4(b)(ii). Next, Respondent has admitted to have attempted to attract Internet users to profit off the likelihood of confusion associated with the source, sponsorship or affiliation with Complainant and its marks under Policy ¶ 4(b)(iv) through its business which has been deemed in the past to be illegitimate. Additionally, Respondent’s inactive holding of the disputed domain names evinces bad faith under Policy ¶ 4(a)(iii). Finally, Respondent had actual and/or constructive knowledge of Complainant’s marks and the rights therein because of the fame associated with the marks.
B. Respondent
Respondent uses words that happen to be trademarks for their non-trademark value.
Respondent has rights and legitimate interests under Policy ¶ 4(c)(iii) because it has a legitimate noncommercial and fair business model evinced by its paradigm of providing free use of its domains and limiting the use of the domain name to route and capture email meta data with no intent to profit from Complainant. Respondent’s <qualcomm.email> domain name consists of generic terms.
Respondent registered the disputed domain names in good faith, stating, “The UDRP does NOT say that knowingly includes[sic] a matching trademark is a violation of the UDRP.” Complainant has failed to establish that Respondent has acted in bad faith. Respondent’s <qualcomm.email> domain name consists of generic terms.
C. Additional Submissions
Complainant:
The declaratory judgment to which Respondent reflects does not constitute relevant precedent in the case at hand as Complainant explains on its additional submission.
Respondent’s business model does not evince rights or legitimate interests as per the misleading nature of the domain to Complainant’s mark. Internet users are very likely to presume an affiliation with Complainant, as Complainant is the only party able to represent rights or interests in the QUALCOMM mark. Further, Respondent admits that it does not need Complainant’s marks to operate its business
Respondent also concedes that it is a for-profit business, as such, Respondent intends to profit from the goodwill associated with Complainant’s mark for commercial gain.
Lastly, QUALCOMM is a coined term, and cannot be alleged, as Respondent alleges, to be a “word that happen[s] to be a trademark.” Therefore, Respondent registered the <qualcomm.email> domain name because of its significance as a trademark, which distinguishes his actions as cybersquatting.
Policy ¶ 4(a)(i) Confusingly Similar, Policy ¶ 4(a)(ii) Rights & Legitimate Interests, and Policy ¶ 4(a)(iii) Bad Faith Use & Registration and Policy ¶ 4(c)(i), Policy ¶ 4(c)(ii) have been violated by the Respondent.
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 QUALCOMM mark in connection with its engineering/computer related services. Complainant purports to have registered the QUALCOMM mark with the USPTO (Reg. No. 1,549,614, registered July 25, 1989), arguing the establishment of Policy ¶ 4(a)(i) rights in the mark. Panel finds where a complainant holds a valid USPTO registration, Policy ¶ 4(a)(i) rights are clearly evidenced. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Accordingly, the Panel finds that Complainant has established its rights in the QUALCOMM mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <qualcomm.email> domain name is confusingly similar/identical to the QUALCOMM mark as the “.email” gTLD addition to the fully incorporated mark is irrelevant to a Policy ¶ 4(a)(i) analysis. There is a resounding consensus amongst URDP panels in which the addition of gTLDs are seen as irrelevant to a Policy ¶ 4(a)(i) determination of confusing similarity. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, this Panel agrees that the <qualcomm.email> is confusingly similar/identical to the QUALCOMM mark under Policy ¶ 4(a)(i).
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 <qualcomm.email> domain name, nor has Complainant given Respondent authorization or permission to use its marks in the registration of domain name. In light of the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Respondent is argued to fail in making a bona fide offering of goods or services, or any legitimate noncommercial or fair use through the disputed domain names. Rather, Complainant contends that Respondent seeks to incorporate the disputed domain names in a service to Internet users for recorded delivery of email and/or an email reply monitoring system, with each driven by a neutral communication platform. Complainant includes precedent in its Complaint, which evinces Respondent’s intention to incorporate confusingly similar domain names in its business model, which does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Foot Locker Retail, Inc. v. yoyo.email et al., FA 1565344 (Nat. Arb. Forum July 8, 2014) (“[Respondent] concedes that it has sunk substantial economic costs into the development of the system and that it intends to recover those costs, by whatever means it may elect, through exploitation of the profit-making potential the system affords. Because the system is built on a foundation that includes Complainant’s domain name, this is enough to establish that the system is commercial in character and that Respondent intends to obtain commercial gain from the use of Complainant’s marks in its domain name”). Pursuant to Respondent’s own concessions in the case at hand, and Respondent’s alleged business model, the Panel finds no rights or legitimate interests in its registration of its confusingly similar/identical <qualcomm.email> domain name per Policy ¶ 4(c)(i) and (iii).
Additionally, as the disputed domain name seemingly fails to resolve to an active website, Complainant argues Respondent’s failure to make an active use further demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Compl., at Attached Annex D (blank resolving page). Panels finds no rights and legitimate interests where a respondent has failed to make an active use of a disputed domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”). Therefore, this Panel finds no basis to declare Respondent has actively used the <qualcomm.email> domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and used the disputed domain name in bad faith. Complainant contends that Respondent has been involved in many prior UDRP decisions in which he has registered famous trademarks in domain names, evidencing serial cybersquatting behavior under Policy ¶ 4(b)(ii). See Compl., at Attached Ex. G (The Black & Decker Corporation v. Giovanni Laporta, Yoyo.Email, D2014-1891 (WIPO Dec. 23, 2014); Lloyds Bank Plc v. Giovanni Laporta (Yoyo.Email), D2014-1540 (WIPO Nov. 12, 2014); 3M Company v. Giovanni Laporta / Yoyo.Email, FA 1585346 (NAF Nov. 26, 2014); Bank of Scotland Plc v. Giovanni Laporta (Yoyo.Email), D2014-1539 (WIPO Nov. 3, 2014); L’Oréal SA v. Yoyo.email, Giovanni Laporta, D2014-1172 (WIPO Sep. 4, 2014)). This panel finds bad faith where a respondent had been the subject of multiple UDRP disputes. 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). This Panel agrees that Respondent’s involvement in the dispute at hand evinces bad faith under Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent has attempted to attract Internet users to profit off the likelihood of confusion associated with the source, sponsorship or affiliation with Complainant and its mark under Policy ¶ 4(b)(iv). Panel finds where a respondent was attempting to profit from a confusingly similar domain name, bad faith under Policy ¶ 4(b)(iv) is present. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Therefore, this Panel agrees that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv) through its illegitimate business model. See Suncor Energy Inc. v. Giovanni Laporta and Yoyo.Email, Case No. D2015-0433 (WIPO, May 1, 2015) (“Respondent’s registration of thousands of ‘.email’ domain names of which a number, including the disputed domain name, consist of a third party trademark without the relevant trademark owner having been asked for permission, seems to be (as the panelist in Accor, SoLuxury HMC v. Giovanni Laporta, Yoyo.Email, supra, called it) ‘most likely for illegitimate purposes’”).
Additionally, Complainant argues that Respondent’s inactive holding of the disputed domain name evinces bad faith under Policy ¶ 4(a)(iii). As such, the Panel agrees that Respondent has apparently failed to use the disputed domain names, demonstrating bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Finally, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the QUALCOMM mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qualcomm.email> domain name be TRANSFERRED from Respondent to Complainant
Hon. Nelson A. Diaz(ret), Panelist
Dated: July 20, 2015
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