Qualcomm Atheros, Inc. v. BUBIK s.r.o.
Claim Number: FA1705001733392
Complainant is Qualcomm Atheros, Inc. (“Complainant”), represented by Anthony D. Peluso of Arent Fox LLP, California, USA. Respondent is BUBIK s.r.o. (“Respondent”), represented by Zuzana Stuchlíková, Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <atheros-drivers.com>, <atheros-vendor.com>, and <atheros-forum.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2017; the Forum received payment on May 25, 2017.
On May 31, 2017, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <atheros-drivers.com>, <atheros-vendor.com>, and <atheros-forum.com> domain names are registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the names. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 June 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@atheros-drivers.com, postmaster@atheros-vendor.com, postmaster@atheros-forum.com. Also on June 2, 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.
A timely Response was received and determined to be complete on June 23, 2017.
On June 27, 2017 an Additional Submission, compliant with Supplemental Rule 7 was received from Complainant.
On June 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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.
Complainant requests that the disputed domain names <atheros-drivers.com>, <atheros-vendor.com>, and <atheros-forum.com> be transferred from Respondent to Complainant.
A. Complainant
Relying on its rights in the registered trademarks listed below and its claimed rights in the mark at common law, Complainant alleges that the disputed domain names are each confusingly similar to its ATHEROS mark.
Complainant submits that it is one of the world’s largest providers of mobile chipsets and related wireless communication technologies, including driver software for its chipsets, and has established common law rights by its extensive use of, and investment in, the marketing of goods and services bearing the ATHEROS mark in numerous jurisdictions since at least as early as August 2001.
Complainant submits that each of the disputed domain names <atheros-drivers.com>, <atheros-vendor.com>, and <atheros-forum.com> domain names wholly incorporates Complainant’s ATHEROS mark and deviates from the mark only by adding (1) the generic top level domain “.com,” (2) a hyphen, and (3) the generic descriptors “drivers,” “vendor,” and “forum,” respectively, to Complainant’s ATHEROS mark.
Complainant argues that the addition of a generic top level domain to a mark is unimportant to the likelihood of confusion analysis and that the addition of the hyphen in each domain name does not serve to distinguish the domain names from its ATHEROS mark. Complainant cites Health Devices Corp. v. Aspen S T C, Case No. FA158254 (Forum, July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Furthermore, numerous panels have held, when a domain name wholly incorporates a complainant’s mark and only adds a generic or descriptive word that is sufficient to establish confusing similarity for the purposes of the Policy. See NIKE, Inc. v. Elah Black/N/A, (Forum Nov. 4, 2014) FA1580701 (finding the domain name <nikeschoolinnovationfund.org> to be confusingly similar to the NIKE mark because the mark was identical and the domain name would lead consumers to believe it belonged to Nike).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names arguing that there is no evidence that Respondent owns any trademark or service mark rights or registrations that are identical, similar, or in any way related to the disputed domain names. No content displayed in the Whois records for the disputed domain names indicates that Respondent claims to be named or to be commonly known by the business names, “Atheros Drivers,” “Atheros Vendor,” “Atheros Forum,” or any of the disputed domain names.
Complainant also asserts that Respondent is not now, and has never been, licensed or authorized by Complainant to use its ATHEROS mark, to register or use any domain names incorporating its ATHEROS mark, or to distribute any goods or services, including software, under the ATHEROS mark.
Complainant submits that Respondent is not making any legitimate noncommercial or fair use of, nor any bona fide offering of goods or services in connection with, the disputed domain names. Each of the disputed domain names resolves to a webpage that displays advertisements. Such use of the disputed domain names by Respondent 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). See Hewlett-Packard Co. v. Collazo, FA144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
Complainant further submits that registration of the confusingly similar domain names with knowledge of Complainant’s rights in the ATHEROS trademark is itself evidence of bad faith. See Nortel Networks Ltd v. Buymebuyme.com, Inc., FA671847 (Forum, May 16, 2006) (noting that registration of a domain name with knowledge of a trademark owner’s rights has been consistently found to constitute bad faith).
Complainant asserts that it had registered and made extensive use of the ATHEROS mark on the Internet and in other media long before Respondent registered and commenced use of the disputed domain names. It can be inferred that Respondent had actual or constructive knowledge of Complainant’s rights.
In such circumstances, Complainant argues that Respondent has failed to discharge its contractual obligations under the Policy to ensure that the disputed domain names do not infringe the rights of a third party.
Complainant refers to print-outs of the websites to which the disputed domain names resolve which demonstrate that, without the authorization of Complainant, Respondent is using the disputed domain names to make Complainant’s copyrighted Qualcomm Atheros driver software available for download to the public. Respondent’s websites feature extensive unauthorized uses of the ATHEROS mark and other famous marks owned by Complainant’s parent company, Qualcomm Incorporated—including the QUALCOMM word mark (U.S. Registration Nos. 1,622,128, 2,268,202, 3,720,881, and 4,017,604, and EUTM Registration Nos. 182790, 8201014, and 8751729) among others. The websites to which two of the disputed domain names resolve, namely, <atheros-drivers.com> and <atheros-forum.com> also display Complainant’s stylized “Q” design mark on the tab of the website. The website established at the <atherosvendor.com> address prominently displays Complainant’s registered trademarks including the design mark.
Complainant alleges that Respondent has attempted to profit from the goodwill associated with Complainant’s ATHEROS mark and the QUALCOMM marks of its parent company by endeavoring to create the false impression that the websites are connected or affiliated with, or otherwise sponsored or endorsed by, Complainant, when such is not the case.
Furthermore Complainant alleges that Respondent began using at least one of the disputed domain name <atheros-drivers.com> only after Complainant notified Respondent of Complainant’s exclusive rights in the ATHEROS and QUALCOMM marks in connection with a related dispute involving a separate domain name: <atheros.cz> which at the time resolved to the same website that is currently accessible through <atheros-drivers.com>.
Purportedly in the interest of resolving the dispute between the parties, Respondent agreed to transfer the <atheros.cz> domain to Complainant; however, on information and belief, prior to completing the actual transfer, Respondent simply linked the infringing website to the <atheros-drivers.com> disputed domain name. Accordingly, Respondent’s conduct clearly demonstrates Respondent’s affirmative intention to continue using the ATHEROS mark and the QUALCOMM marks in bad faith.
Complainant finally submits that the disputed domain names were registered in order to prevent Complainant as the owner of the trademark or service mark ATHEROS from reflecting the mark in a corresponding domain name and having engaged in a pattern of such past conduct. Complainant submits that such use of the disputed domain names is evidence of bad faith under the Policy. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum, Feb. 3, 2010).
In support of this allegation, Complainant also attaches a copy of the results of a reverse Whois report which shows that Respondent has registered multiple domain names that incorporate the federally registered trademarks of well-known parties which Complainant has listed in the Complaint.
B. Respondent
Respondent does not dispute Complainant’s rights in the ATHEROS mark or that the disputed domain names are confusingly similar to Complainants mark but states that in order to avoid confusion, notices, which are clearly visible at first glance, have been placed prominently on each of the websites to which the disputed domain names resolve which expressly state that the website is not the official representation of Complainant.
Respondent claims a legitimate interest in the <atheros-drivers.com> and <atheros-vendor.com> because they are used in good faith and resolve to websites which offer to the public free downloads of Complainant´s products - Qualcomm Atheros drivers - which are publicly available on the internet. Respondent always checks each driver to ensure that it is working properly and is without virus before publishing it on the website. The drivers can be downloaded by visitors of the website free of charge and therefore the website is non-commercial.
Respondent argues that such use of the <atheros-drivers.com> and <atheros-vendor.com> complies with the accepted principles first established in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Each of the domain names resolve to a website which sells only the trademarked goods; each website accurately discloses the Respondent’s relationship with the trademark owner; and Respondent denies any attempt to corner the market in all domain names or to deprive the trademark owner of the opportunity to reflect its own mark in a domain name.
Respondent claims that he puts the <atheros-forum.com> to a legitimate noncommercial use. It is not used to offer any goods or services but resolves to a website which provides an online forum for discussions related to Qualcomm Atheros drivers and information about Complainant including links to a page about Complainant on www.wikipedia.com and to Complainant´s official website.
Respondent denies damaging Complainant’s marks or reputation but states that the disputed domain names were chosen to promote Complainant´s products, because Respondent believes in their quality, and by promoting Complainant’s products, Respondent contributes to the reputation of Complainant, its goods and services. Respondent asserts that the disputed domain names are not used to promote or sell products manufactured by competitors of Complainant.
C. Additional Submissions
In additional submissions Complainant submits that the arguments put forward in the Response fail to show that Respondent has any rights or legitimate interests in the disputed domain names or that Respondent is not using the disputed domain names in bad faith. In particular, Respondent fails to satisfy any of the factors from the Oki Data case to show that it has a legitimate interest in the disputed domain name.
Complainant repeats its allegation that the disputed domain names are being used in a non-commercial manner as they each resolve to a website that displays advertisements from which, on information and belief, Respondent generates a financial profit.
Additionally, the websites to which the domain names <atheros-drivers.com> and <atheros-forum.com> resolve feature dropdown menus in the top menu bar that provide links to Complainant’s official website under the word “Headquarters,” and by Respondent’s own admission in its Response, the website currently accessible at <atheros-forum.com>—which now redirects to <ath-forum.eu>—also links to Qualcomm’s Wikipedia page. Such hyperlinking only compounds the false impression of a connection or affiliation between Respondent’s websites and Complainant.
In the Oki Data there was no dispute as to the respondent’s status as an authorized repair facility for, and seller of, the complainant’s goods whereas in the present case Respondent has not been authorized or licensed by Complainant to offer downloads of its copyrighted works on its websites or to otherwise use any of Complainant’s or Qualcomm’s trademarks either in its domain names or on its websites. Complainant argues that the cases cited by Respondent to establish that the OKI Data principles apply to authorised distributors and not to the circumstances in the present case, and proposes other decisions which support Complainant’s position.
While each of the websites in issue contains a statement that it is “unofficial,” however, this statement is insufficient alone to prevent visitors from being deceived and drawing the false inference that Respondent’s websites are connected or affiliated with, or otherwise sponsored or endorsed by, Complainant. By including ATHEROS in the disputed domain names, the prominent use of Complainant’s and Qualcomm’s trademarks throughout Respondent’s websites, and the use of links to Qualcomm’s official website and Wikipedia page in a manner suggesting an affiliation with Complainant and Qualcomm—the true nature of the relationship (or, rather, the lack thereof) between Respondent and Complainant is anything but clear. Respondent’s websites therefore fail to properly disclose the absence of a relationship between Respondent and the trademark owner.
In Oki Data, the record indicates that the respondent had registered only one single Oki Data-related domain name whereas in the present case Respondent has registered three disputed domain names that incorporate Complainant’s ATHEROS mark; two of which appear to resolve to identical websites that promote and/or provide the same goods and services. Thus, Respondent’s efforts to register multiple, redundant domains reflects a clear intent to corner the market in all domain names.
Further, while Respondent argues that <atheros-forum.com> is only a discussion forum website and is therefore not being used in bad faith, Complainant is unable to locate any active forum on the site. Accordingly, Respondent has no apparent basis for this argument, and the domainnames are clearly being used in bad faith.
Complainant manufactures and markets mobile chipsets and related wireless communication technologies, including driver software for its chipsets and is the owner of numerous trademark registrations in the United States, the European Union, and other countries around the world for the ATHEROS mark including:
- U.S. Trademark Registration No. 2,628,993 a) ATHEROS, registered October 1, 2002 for computer hardware, namely, computer chips and modules for wireless communications, data communications and voice communications; computer software for controlling, operating, and interfacing with wireless communications systems, in Class 9;
- U.S. Registration No. 3,948,735 ATHEROS (Stylized), registered April 19, 2010 for computer hardware, namely, computer chips and modules for wired and wireless communications, data communications, and multi-media communications; computer software for controlling, operating, and interfacing with wired and wireless communication systems, in Class 9;
- EUTM Reg. No. 001821461 ATHEROS registered October 5, 2001 for computer hardware, namely, computer chips and modules for wireless communications, data communications and voice communications, and related communications software, in Class 9; and
- EUTM Reg. No. 8874265 ATHEROS (Stylized), registered August 10, 2010 for computer hardware, namely, computer chips and modules for wired and wireless communications, data communications, and multi-media communications; computer software for controlling, operating, and interfacing with wired and wireless communication systems, in Class 9.
The disputed domain name <atheros-drivers.com> was registered on June 29, 2010; <atheros-vendor.com> was registered on April 4, 2011; <atheros-forum.com> was registered on May 2, 2012.
Respondent has established and maintains a number of websites two of which purport to provide free downloads of drivers for Complainant’s products and the third purports to provide a discussion forum for users of Complainant’s goods and services. Respondent has no connection or affiliation whatsoever with Complainant.
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."
Policy ¶ 4(a) 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.
This Panel finds, and Respondent admits that the disputed domain names are confusingly similar to the trademark ATHEROS in which Complainant has rights.
Each of the disputed domain names contains Complainant’s mark in its entirety as the dominant element in combination together with generic elements that do not serve to distinguish the domain names and the ATHEROS mark in any way.
Complainant has therefor satisfied the first element of the test in Policy ¶ 4(a)(i).
In OKI Data the panel decided that
“[t]o be ‘bona fide,’ the offering must meet several requirements. Those include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue…
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods…
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents…
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.”
In the evidence submitted with the Complaint, the website to which <atheros-drivers.com> resolves has a prominent statement at the top of the homepage “Unofficial Qualcomm Atheros drivers website”. It appears to provide links to downloads for Qualcomm Atheros wireless drivers. It also contains a panel with links to websites to which the other disputed domain names resolve and to third party websites with technology-related content. It also has two panels which state “ad closed by Google”. In a further print-out submitted in Additional Submissions these panels are replaced by an advertisement for Google Express services and for a third party offering employee benefit insurance plans. Additionally a drop down menu has been activated with includes a link to “Headquarters”.
In the print-out submitted with the Complaint, the website to which <atheros-vendor.com> resolves has a prominent statement at the top of the homepage “THE UNOFFICIAL VEN/DEV CZECH DRIVERS SITE”. In addition to information purportedly about Complainant’s products, it also displays Complainant’s design trademark on the top left hand corner and has three prominent panels displaying advertisements - two for a well-known hotel group and a third for what appears to be a third party software service. In further evidence submitted by Complainant in Additional Submissions these panels are replaced by two third-party advertisements for headphones and one for mobile phone sales. The website also appears to have a link to a third-party website as well as to a website accessible via Respondent’s <atheros-drivers.com> domain name.
A number of issues have been argued in the submissions, set out in extenso above, such as whether the OKI Data principles apply where, as in the present case Respondent is not an authorized distributor; whether offering of free downloads equates to an offer to sell goods for the purpose of the OKI Data test; and whether the statements on Respondent’s website that it is an unofficial site is sufficient to satisfy the OKI Data test because of other content which is posted on the site.
It is not necessary to decide these points in this case because Respondent is not using the websites to which the disputed domain names <atheros-drivers.com> and <atheros-vendor.com> for the sole purpose of offering Complainant’s products. In each case Respondent is benefitting from the use of the disputed domain names by taking predatory advantage of Complainant’s goodwill and reputation to earn advertising revenue from advertising third party goods and services. Respondent has therefore failed to meet the test in OKI Data.
Turning to the website to which <atheros-forum.com> resolves: it also has a prominent statement at the top of the homepage “Unofficial Qualcomm Atheros technical forum”. The most prominent panel at the top of the homepage contains the following statement: “Unofficial Qualcomm Atheros technical forum and FAQ for Microsoft Windows, Linux and other drivers.” There is a further panel in the body of the page which contains questions about Complainant’s drivers. There appears to be no answers to these questions posted and it is noteworthy that the questions are anonymous and unsigned, which is uncommon on such fora.
There is a further prominent panel at the top right hand side of the homepage which contains an advertisement for a New York hotel and another panel which states “ad closed by Google”. In the further print-out, dated 27 June 2017 submitted by Complainant in Additional Submissions, this panel is replaced by an advertisement for a domain name registrar. Additionally a drop down menu has been activated with includes a link to “Headquarters; Qualcomm Technologies, Inc.”
It is not necessary to decide whether there is a bona fide forum established on this website as Respondent asserts and Complainant denies. On the evidence Respondent is clearly engaged in a commercial activity and gaining a financial benefit from the use of the disputed domain names by taking predatory advantage of Complainant’s goodwill and reputation to attract Internet users and thereby earn revenue from advertising third party goods and services.
Respondent is therefore not making a legitimate noncommercial or fair use of the domain name <atheros-forum.com>, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated by Policy ¶ 3.c.(iii) and asserted by Respondent.
Complainant has therefore satisfied second element of the test in Policy ¶ 4(a)(ii)
On the evidence submitted and discussed above, this Panel finds that each of the three disputed domain names were registered and are being used in bad faith.
Two of the websites to which the disputed domain names resolve are used to provide free downloads of Complainant’s drivers. The third purports to be a discussion forum, which is disputed.
Respondent has invested both in the domain names and in establishing and maintaining the websites to which they resolve. Respondent is clearly engaged in this activity for a commercial purpose.
The similarity of Complainant’s mark to the disputed domain names will inevitably cause an initial interest confusion among the public using the Internet.
On the balance of probabilities therefore, this Panel finds that Respondent has selected, registered and is using the disputed domain names to take predatory advantage of Complainant’s goodwill and reputation in the ATHEROS mark by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web sites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or services provided by Respondent.
Complainant has therefore satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atheros-drivers.com>, <atheros-vendor.com>, and <atheros-forum.com> domain names be TRANSFERRED from Respondent to Complainant.
_________________
James Bridgeman Panelist
Dated: July 1, 2017
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