Qualcomm Incorporated v. Morgan Lee / HK Parkeli United Development Co., Ltd.
Claim Number: FA1704001728777
Complainant is Qualcomm Incorporated (“Complainant”), represented by Diana S. Bae of Arent Fox LLP, District of Columbia, USA. Respondent is Morgan Lee / HK Parkeli United Development Co., Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iqualcomm.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 25, 2017; the Forum received payment April 25, 2017.
On April 25, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <iqualcomm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@iqualcomm.com. Also on April 26, 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 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 issues 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’s Allegations in this Proceeding:
Complainant registered its QUALCOMM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 1,549,614, registered Jul. 25, 1989). See Compl., at Attached Annex A. Respondent’s <iqualcomm.com> is confusingly similar to Complainant’s mark because it merely adds the letter “i” before the fully incorporated mark and appends the generic top level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant never licensed or otherwise authorized Respondent to make any use of its QUALCOMM mark and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Annex D. Respondent uses the domain name to resolve to an inactive webpage. Id. Further, Respondent engaged in typosquatting. Such use is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent had actual knowledge of Complainant’s rights in the QUALCOMM mark at the time of registration given the fame of the mark, use of the mark itself in the domain name and use and/or failure to make an active use of the domain, each of which supports findings of bad faith registration and use. Finally, Respondent’s typosquatted domain name permits findings of bad faith in and of itself.
B. Respondent’s Contentions in Response.
Respondent failed to submit a Response in this proceeding. The Panel was unable to find any reference by Respondent or the documents in the submission to suggest any date of formation of the disputed domain name; however, given the lack of Response, the Panel will assume that had Respondent had a date prior to the date Complainant completed its numerous registrations of its protected mark, the first of which appears to have been in 1989, Respondent would have made that known to the Panel and/or the WHOIS information would have reflected such a date.
Complainant established full legal rights and legitimate interests giving rise to protection for its mark used by Respondent in the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or the disputed domain name.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used and/or passively held 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant operates its business in connection with mobile chipsets and related wireless communication technologies. Complainant has operated in this industry since at least September 1985. Complainant registered its QUALCOMM mark with the USPTO (Reg. 1,549,614, registered Jul. 25, 1989), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Annex A. A USPTO registration confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the QUALCOMM mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <iqualcomm.com> is identical or confusingly similar to Complainant’s mark because it merely adds the letter “i” to the fully incorporated QUALCOMM mark and appends the gTLD “.com”. The addition of a single letter to a mark and appendage of a gTLD does not distinguish a disputed domain name and prevent findings that a domain name is confusingly similar. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that <iqualcomm.com> is identical or confusingly similar to Complainant’s mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing in its entirety a typosquatted form of Complainant’s mark, creating a confusingly similar domain name. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that it has not licensed or otherwise authorized Respondent to use its QUALCOMM mark in any way. Where no evidence in the record contradicts Complainant’s contention, the Panel finds that Complainant did not authorize Respondent to use Complainant’s mark in a domain name and this supports findings that Respondent has no rights or legitimate interests in the disputed 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). Additionally, WHOIS information is used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the <iqualcomm.com> WHOIS information lists “MORGAN LEE” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by <iqualcomm.com>.
Next, Complainant urges that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the domain name resolves in an inactive webpage. Such use cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provided a screenshot of Respondent’s inactive webpage. Comp., at Attached Annex D. The Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
In addition to the violations stated above, Complainant alleges that the disputed domain violates Policy ¶¶ 4(a)(ii) due to typosquatting. A complainant can evidence a lack of rights and legitimate interests using a typosquatting argument. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Respondent’s domain name exploits Internet users’ misspelling of Complainant’s QUALCOMM mark. Therefore, the Panel finds that Respondent engaged in typosquatting under requirements of Policy ¶¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
The Panel agrees that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that in light of the fame and notoriety of Complainant’s QUALCOMM mark, it is inconceivable that Respondent could have registered the <iqualcomm.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name can sufficiently evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel can determine that a respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s QUALCOMM mark enjoys significant good will and consumer recognition around the world and Complainant’s use goes back to 1989. See Compl., at Attached Annex A. Therefore, due to the fame of Complainant’s mark, the Panels find that Respondent had actual knowledge of Complainant’s rights when Respondent registered <iqualcomm.com> and used and/or passively held it.
Complainant contends that Respondent is not making an active use of the <iqualcomm.com> disputed domain name, which resolves to a webpage that is an inactive site. A respondent’s failure to make an active use of a disputed domain name’s resolving webpage is evidence of bad faith. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Complainant provided screenshot evidence of the disputed domain name’s inactive resolving webpage. See Compl., at Attached Annex D. Based on this evidence, the Panel finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that the disputed domain name evidences typosquatting and, therefore, is evidence of bad faith. Typosquatting inherently is evidence of bad faith. See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on users who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”). The Panel notes that the disputed domain name differs from Complainant’s mark by the addition of one letter, “i,” and the gTLD “.com”. Therefore, the Panel finds Respondent engaged in typosquatting, constituting bad faith for the purposes of Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <iqualcomm.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 5, 2017
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