Micron Consumer Products Group, Inc. v. Omer Faiyaz
Claim Number: FA1701001710747
Complainant is Micron Consumer Products Group, Inc. (“Complainant”), represented by John C. Cain of Fleckman & McGlynn, PLLC, Texas, USA. Respondent is Omer Faiyaz (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexar-photorecovery.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on January 4, 2017; the Forum received payment on January 4, 2017.
On January 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lexar-photorecovery.com> 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 January 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2017 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@lexar-photorecovery.com. Also on January 6, 2017, 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 February 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant provides goods and services related to computer memory products and image file recovery. Complainant uses the LEXAR mark in conjunction with its business practices. Complainant registered the LEXAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg No. 2,905,053, registered Nov. 23, 2004). Respondent’s <lexar-photorecovery.com> is confusingly similar to Complainant’s LEXAR mark because it uses the mark in its entirety, adding the descriptive term “photorecovery,” a hyphen, and the “.com” generic top level domain (“gTLD”). Specifically, Respondent’s use of “photorecovery” arguably shows a relationship to Complainant’s products and services.
ii) Respondent does not have a right or legitimate interest in <lexar-photorecovery.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the LEXAR mark in any respect, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. Respondent’s <lexar-photorecovery.com> resolves to a webpage that sells computer software products in direct competition with Complainant, presumably for Respondent’s profit.
iii) Respondent registered and is using <lexar-photorecovery.com> in bad faith. The disputed domain name directs Internet users to a webpage offering products and services in direct competition with Complainant. Respondent registered <lexar-photorecovery.com> with constructive and/or actual notice of Complainant and its rights to the LEXAR mark.
B. Respondent
Respondent has not submitted a response. The Panel notes that Respondent registered <lexar-photorecovery.com> on April 4, 2013.
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.
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.”).
Complainant provides goods and services related to computer memory products and image file recovery. Complainant uses the LEXAR mark in conjunction with its business practices. Complainant claims it registered the LEXAR mark with the USPTO (e.g., Reg No. 2,905,053, registered Nov. 23, 2004). The general consensus among Panels is that USPTO registrations sufficiently establish a complainant’s rights to a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Based on the USPTO registration the Panel finds that Complainant has sufficient rights to the LEXAR mark.
Complainant asserts that Respondent’s <lexar-photorecovery.com> is confusingly similar to Complainant’s LEXAR mark because it uses the mark in its entirety, adding the descriptive term “photorecovery,” a hyphen, and the “.com” general top level domain (“gTLD”). Specifically, Respondent’s use of “photorecovery” arguably shows a relationship to Complainant’s products and services. Panels have “conclude[d] that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.” Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005). In the instant case, the Panel agrees and find that Respondent’s <lexar-photorecovery.com> is confusingly similar to Complainant’s LEXAR mark.
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 (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 (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 does not have a right or legitimate interest in <lexar-photorecovery.com>. To support this argument, Complainant asserts that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the case indicates that Respondent used the privacy service “Domains By Proxy, LLC” to shield its identity. Later WHOIS information identifies Respondent as “Omer Faiyaz.” Panels typically find that in the absence of additional information, WHOIS information is sufficient to establish that Respondent is not commonly known by the disputed domain name. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Therefore, the Panel finds that Respondent is not commonly known as <lexar-photorecovery.com>.
Furthermore, Complainant avers that it has not authorized or licensed Respondent to use the LEXAR mark in any respect, nor is Respondent affiliated with Complainant. Complainant maintains that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. To support its case, Complainant demonstrates that Respondent’s <lexar-photorecovery.com> resolves to a webpage that sells computer software products in direct competition with Complainant, presumably for Respondent’s profit. “[C]apitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). Additionally, Panels have found that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). Hence, the Panel concludes that Respondent does not have rights or legitimate interests in <lexar-photorecovery.com> under Policy ¶ 4(c)(i) or ¶ 4 (c)(iii).
Complainant asserts that Respondent registered and is using <lexar-photorecovery.com> in bad faith. The Panel recalls that the disputed domain name resolves to a webpage offering photo recovery software in direct competition with Complainant. Complainant claims that the disputed domain name attracts Internet users to a webpage offering products and services in direct competition with Complainant, thereby disrupting its business. Panels have found that respondents registering a domain name primarily to disrupt its competitor by selling similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with” evinces bad faith under Policy ¶ 4(b)(iii). Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003). Therefore, the Panel finds that Respondent registered and is using <lexar-photorecovery.com> in bad faith under Policy ¶ 4(b)(iii).
Finally, Complainant avers that Respondent registered <lexar-photorecovery.com> with constructive and/or actual notice of Complainant and its rights to the LEXAR mark. Complainant claims that the disputed domain name contains direct references to Complainant and its products, evincing actual knowledge of Complainant and its rights to the LEXAR mark. Panels have disregarded a complainant's arguments concerning constructive knowledge, as Panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, in the instant case, the Panel infers, due to the manner of use of the disputed domain name by Respondent, that Respondent had actual knowledge, and concludes that Respondent registered the <lexar-photorecovery.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexar-photorecovery.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 9, 2017
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