L-com, Inc. v. WhoisGuard Protected / WhoisGuard, Inc.
Claim Number: FA1704001725239
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, United States. Respondent is WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info>, registered with NameCheap, Inc.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2017; the Forum received payment on April 4, 2017.
On April 5, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@l-com-signin-lang-de.info, postmaster@l-com-signin-lang-ger.info. Also on April 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 May 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant registered the L-COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003).
Respondent’s <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info> domain names are confusingly similar as they both add three dashes, the terms “sign in,” “lang” (short for “language”), a country code, and the generic top-level domain (“gTLD”) “.info.”.
Respondent has no rights or legitimate interests in <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info>, nor does Respondent use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent has never been known by the domain names nor acquired any trademark rights in any mark similar to the domain names. Respondent uses the domain names as a placeholder, with a blank webpage simply containing the German words “geh weg,” or “go away” in English.
Respondent registered and uses the <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info> domain names in bad faith. Respondent uses the disputed domain names to disrupt Complainant’s business by creating a likelihood of confusion as to sponsorship, affiliation or endorsement by Complainant of Respondent’s webpages. Prospective users, by seeking Complainant and instead ending up on Respondent’s resolving webpages, may believe that Complainant is out of business, thus damaging its business by losing customers. Finally, Respondent must have had actual or constructive knowledge of Complainant’s L-COM mark, because Complainant has operated under the mark continuously since 1985, it began operating its online website in 1996, and it registered its trademark in 2003, all of which predate the registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the L-COM mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the L-COM trademark.
Respondent uses the at-issue domain names to address a blank webpage simply containing the German words “geh weg” meaning “go away” 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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in its L-COM mark pursuant to Policy ¶ 4(a)(i) by its registration of such mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s at-issue domain names each start with Complainant’s entire L-COM trademark adding either the hyphenated terms “signin-lang-de” or “signin-lang-ger.” Each domain name concludes with the top-level domain name, “.info.” The resulting differences between each of the domain names and Complainant’s L-COM trademark are insufficient to distinguish either domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info> domain names are each confusingly similar to Complainant’s L-COM trademark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also, Infineon Technologies AG v. mustafa mashari, FA 1619868 (Forum June 27, 2015) (holding “the addition of the “.info” gTLD is seen as irrelevant to its analysis”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at‑issue domain names.
WHOIS information supports a finding under Policy ¶ 4(c)(ii) that Respondent is not commonly known by either at-issue domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). WHOIS information for the at-issue domain names identifies the domain names’ registrant as “WhoisGuard Protected / Whois Guard, Inc” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <l-com-signin-lang-de.info> domain name, or the <l-com-signin-lang-ger.info> domain name. The Panel therefore concludes that Respondent is not commonly known by either at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also, 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).
Respondent’s <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info>domain names each address a mainly blank webpage without any demonstrable preparations for use. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith with regard to each domain name pursuant to Policy ¶ 4(a)(iii).
The confusingly similar domain names each have the potential to trick users into mistakenly believing that there is an association between Complainant and any web presence promulgated by the domain names. The sparse webpage now addressed by the domain names may indicate to some internet users that Complainant has changed its interests or even gone out of business. To wit, Respondent’s registration and use of the domain names is likely to disrupt Complainant’s business; there is no evidence to the contrary. Therefore, Respondent’s bad faith is demonstrated pursuant to Policy ¶ 4(b)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Finally, Respondent had actual knowledge of Complainant’s rights in the L-COM mark when it registered the <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info> domain names. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s unauthorized and unexplained use of Complainant’s trademark in two confusingly similar domain names. Registering and using the confusingly similar domain names with knowledge of Complainant’s rights in such domain names indicates bad faith registration and use of each domain name pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering 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 <l-com-signin-lang-de.info> and <l-com-signin-lang-ger.info> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 3, 2017
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