Panasonic Corporation of North America v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1705001731035
Complainant is Panasonic Corporation of North America ("Complainant"), represented by Holly Pekowsky of Amster, Rothstein & Ebenstein LLP, New York, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings ("Respondent"), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <panasonicportal.com>, registered with Internet Domain Service BS Corp.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2017; the Forum received payment on May 10, 2017.
On May 12, 2017, Internet Domain Service BS Corp confirmed by email to the Forum that the <panasonicportal.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 May 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@panasonicportal.com. Also on May 17, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 June 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant's corporate parent, Panasonic Corporation, owns and uses the PANASONIC mark for consumer electronics products, home appliances, and various other products and services. Complainant is a licensee of the PANASONIC mark. Panasonic Corporation owns numerous U.S. trademark registrations for PANASONIC. The PANASONIC mark has been used by Complainant in the United States for nearly sixty years, and Complainant asserts that it has become famous. Complainant provides information regarding its sales revenues, advertising expenditures, and other data, and notes that courts have recognized the mark as famous.
The disputed domain name <panasonicportal.com> was registered by Respondent through a privacy registration service in September 2016. Complainant states that Respondent is not commonly known by any name that includes the mark, and that the disputed domain name resolves to a website that attempts to install malware on a user's computer.
Complainant contends on the above grounds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.").
The disputed domain name <panasonicportal.com> corresponds to the famous PANASONIC mark that Complainant has licensed from its corporate parent, with the addition of the generic term "portal" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and the mark. See, e.g., Panasonic Corp. v. Pan Shun, D2013-2202 (WIPO Jan. 29, 2014) (finding <panasonicjapan.com> confusingly similar to PANASONIC); Graduate Management Admission Council v. Climb First Consultancy Pvt Ltd, D2013-1293 (WIPO Sept. 10, 2013) (finding <gmatportal.com> confusingly similar to GMAT); Bank of America Corp. v. Out Island Properties, Inc., FA 154531 (Forum June 3, 2003) (finding <bankamericaportal.com> confusingly similar to BANKAMERICA). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainant's mark with a generic term, and it is being used to disseminate malware. Such use does not give rise to rights or legitimate interests. See, e.g., CCL Label, Inc. v. Christopher Tancr, FA 1727564 (Forum May 24, 2017).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name that incorporates Complainant's famous mark, together with the use of the domain name to disseminate malware, presumably for financial gain, is indicative of bad faith under these provisions of the Policy. See, e.g., CCL Label, Inc. v. Christopher Tancr, supra. The Panel notes that Respondent has been found in numerous prior proceedings under the policy to have registered and used other domain names incorporating famous marks in bad faith. See Philip Morris USA Inc. v. Maddisyn Fernandes, Fernandes Privacy Holdings / Domain Admin / Whois Privacy Corp., D2017-0704 (WIPO June 7, 2017). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <panasonicportal.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page