L-com, Inc. v. Resolution Services / Resolution Services Ltd.
Claim Number: FA1611001703364
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is Resolution Services / Resolution Services Ltd. (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lcom.com>, registered with DomReg Ltd. d/b/a LIBRIS.COM.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2016; the Forum received payment on November 17, 2016.
On November 21, 2016, DomReg Ltd. d/b/a LIBRIS.COM confirmed by e-mail to the Forum that the <lcom.com> domain name is registered with DomReg Ltd. d/b/a LIBRIS.COM and that Respondent is the current registrant of the name. DomReg Ltd. d/b/a LIBRIS.COM has verified that Respondent is bound by the DomReg Ltd. d/b/a LIBRIS.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 November 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2016 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 firstname.lastname@example.org. Also on November 23, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant has rights in the L-COM mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,697,029, registered Mar. 18, 2003). See Compl., at Attached Ex. A. Respondent’s <lcom.com> is confusingly similar because it merely omits the hyphen from the mark and appends the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <lcom.com>. Respondent has not been known by the domain name nor acquired any trademark rights in any mark similar to <lcom.com>. Furthermore, Respondent has not used the domain name in any fashion; rather, the resolving webpage returns the message, “Server not found.” Compl., at Attached Ex. E. This non-use indicates a failure to make any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <lcom.com> in bad faith. Respondent’s mere possession of <lcom.com> suggests Policy ¶¶ 4(b)(iii) and (iv) because Respondent may be compelled to perpetrate a fraud.
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on October 11, 2004.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
Pursuant to UDRP Rule 11(a), the Panel further finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be 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(f), 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 (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 Panel finds that the disputed domain name, <lcom.com>, is confusingly similar to the Complainant’s valid and subsisting trademark, LCOM. Complainant has adequately plead its rights and interests in and to that trademark. Respondent arrives at the disputed domain name by merely deleting the hyphen from the trademark and appending “.com” to the end of the mark. This is insufficient to distinguish the disputed domain name from the registered trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
In addition, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent apparently is not known by the disputed domain name. The WHOIS information lists “Resolution Services / Resolution Services Ltd.” As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
Furthermore, Complainant argues that Respondent has not used the domain name in any fashion; rather, the resolving webpage returns the message, “Server not found.” See Compl., at Attached Ex. E. Failure to use a domain name can impute a lack of rights and legitimate interests in a domain name. See Thermo Electron Corp. v. Xu, FA 713851 (FORUM July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Accordingly, the Panel finds that Complainant has met its prima facie burden of showing that Respondent lacks rights and legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent engaged in bad faith use and registration of the dispute domain name. Complainant argues that Respondent’s mere possession of <lcom.com> suggests Policy ¶¶ 4(b)(iii) and (iv) bad faith because Respondent may be compelled to perpetrate a fraud. Complainant notes that on several occasions, respondents have failed to use the resolving website of an infringing domain name, while using the domain name as an email suffix in an effort to email Complainant’s vendors, requesting delivery of products on Complainant’s credit through purchase orders. Complainant provides no evidence of such use by Respondent—only speculation. However, as Respondent has not responded, the Panel must accept at true any reasonable assertion made by Complainant. As this is clearly not an unreasonably assertion, the Panel accepts this argument as possible, although it does not accept the notion that Respondent may be “compelled” to commit a fraud. In the very least, under a totality of the circumstances test, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Complainant claims that the mere registration and nonuse of the disputed domain name for 12 years constitutes bad faith use and registration of the disputed domain name. Although Complainant provides no evidence that justifies a 12 year delay in bringing this complaint and, further, no evidence of actual business disruption by Respondent using the disputed domain name, the similarity between the disputed domain name and Complainant’s registered trademark adequately demonstrates that this is not only possible but quite likely. See generally Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Therefore, under the totality of the circumstances, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <lcom.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: December 21, 2016
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