Micron Consumer Products Group, Inc. v. sandy sags
Claim Number: FA1701001710750
Complainant is Micron Consumer Products Group, Inc. (“Complainant”), represented by John C. Cain of Fleckman & McGlynn, PLLC, Texas, USA. Respondent is sandy sags (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexarphotorecovery.net>, registered with Name.com, Inc.
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.
Bruce E. Meyerson 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, Name.com, Inc. confirmed by e-mail to the Forum that the <lexarphotorecovery.net> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@lexarphotorecovery.net. Also on January 9, 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 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Micron Consumer Products Group, Inc., develops and sells media for consumer electronic devices. In connection with this business, Complainant uses its LEXAR mark to offer computer memory products, including USB flash drives, memory cards and card readers, and software for recovering image files from such computer memory products.
2. Complainant has rights to the LEXAR mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,905,053, registered Nov. 23, 2004). Respondent’s <lexarphotorecovery.net> is confusingly similar to the mark, as it contains the mark in its entirety, and merely differs by the addition of the descriptive term “photorecovery” and the generic top-level domain name gTLD “.net.”[1]
3. Respondent has no rights or legitimate interests in <lexarphotorecovery.net>. Respondent is not commonly known by the domain name, nor has Complainant granted Respondent any license or other permission to use the LEXAR mark in any form.
4. Respondent’s use of the domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name resolves to a commercial website where Respondent sells software products that directly compete with those of Complainant.
5. The <lexarphotorecovery.net> domain name has been registered and used in bad faith pursuant to the Policy. Respondent is using the domain name and its resolving website to confuse and attract Internet users in order to sell software products for commercial gain.
6. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the LEXAR mark at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LEXAR mark. Respondent’s domain name is confusingly similar to Complainant’s LEXAR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lexarphotorecovery.net> domain name and that Respondent registered and uses the 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 has rights in the LEXAR mark based upon multiple registrations of the mark with the USPTO (e.g. Reg. No. 2,905,053, registered Nov. 23, 2004). Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (FORUM Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant next contends that <lexarphotorecovery.net> is confusingly similar to its LEXAR mark, as the domain name contains the mark in its entirety, with the addition of the descriptive term “photorecovery” and the gTLD “.net.” Addition of a descriptive term and a gTLD to a mark to form a domain name does not distinguish the domain name in a Policy ¶ 4(a)(i) analysis from a mark in which a complainant has rights. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (FORUM Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (FORUM Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Accordingly, the Panel finds the <lexarphotorecovery.net> domain name to be confusingly similar to the LEXAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <lexarphotorecovery.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (FORUM Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <lexarphotorecovery.net> as Respondent is not commonly known by the domain name, nor has Complainant granted Respondent any license or other permission to use the LEXAR mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (FORUM Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “sandy sags.” Additionally, nothing in the record indicates that Respondent has been authorized to register a domain name using Complainant’s mark; thus the record reflects Respondent does not have rights or legitimate interests in the <lexarphotorecovery.net> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (FORUM June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the domain name is shown by Respondent’s failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <lexarphotorecovery.net> resolves to a commercial website that sells photograph recovery software in direct competition with products offered by Complainant. Use of a domain name and resolving website to sell products or services that directly compete with a complainant’s business is not a use indicative of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (FORUM March 10, 2016) (finding 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).”). The Panel therefore finds that Respondent’s use of the <lexarphotorecovery.net> domain name is not a use that grants rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that the <lexarphotorecovery.net> domain name should be considered to have been registered and used in bad faith because the domain name and resolving website are being used to confuse and attract Internet users in order to sell software products for commercial gain. Use of a domain name to confuse and attract Internet users for commercial gain is indicative of Policy ¶ 4(b)(iv) bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (FORUM May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, the Panel finds Respondent to have acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also asserts that, due to its extensive list of trademark registrations, Respondent must have had actual knowledge of Complainant's rights in the LEXAR mark when Respondent registered the disputed domain name. Complainant further argues that the advertisements for photo recovery software, which is the same types of products offered by Complainant, also indicate that Respondent had actual knowledge of Complainant and its rights. This contention is further strengthened by the fact that Respondent uses images of Complainant’s other products to promote its offerings. The Panel agrees with Complainant and concludes that Respondent registered the <lexarphotorecovery.net> 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).").
The Panel finds Complainant has satisfied 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 <lexarphotorecovery.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 14, 2017
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