Qualcomm Incorporated v. mahdi masoudi
Claim Number: FA1706001736552
Complainant is Qualcomm Incorporated (“Complainant”), represented by Diana S. Bae of Arent Fox LLP, District of Columbia, USA. Respondent is mahdi masoudi (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qualcomm3g.com>, registered with Realtime Register B.V.
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 June 20, 2017; the Forum received payment on June 20, 2017.
On June 21, 2017, Realtime Register B.V. confirmed by e-mail to the Forum that the <qualcomm3g.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@qualcomm3g.com. Also on June 21, 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 July 12, 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, an American telecommunications equipment company, registered its QUALCOMM mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,549,614, registered July 25, 1989), and has rights in the mark under Policy ¶ 4(a)(i).
2. Respondent’s <qualcomm3g.com> domain name[1] is confusingly similar to Complainant’s mark because it simply appends the term “3g” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
3. Respondent lacks rights and legitimate interests in the <qualcomm3g.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its QUALCOMM mark in any fashion and Respondent is not commonly known by the domain name.
4. Respondent has registered and is using the domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration due to the fame and notoriety of Complainant’s QUALCOMM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the QUALCOMM mark. Respondent’s domain name is confusingly similar to Complainant’s QUALCOMM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <qualcomm3g.com> 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 registered its QUALCOMM mark with the USPTO (e.g. Reg. No. 1,549,614, registered July 25, 1989), and has rights in the mark under Policy ¶ 4(a)(i). 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).
Complainant argues that Respondent’s <qualcomm3g.com> domain name is confusingly similar to Complainant’s mark because it simply appends the term “3g” and the gTLD “.com” to the fully incorporated mark. The addition of “3g” and the gTLD “.com” are not considered sufficiently distinguishing. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). Here, the term “3g” is descriptive of Complainant’s business because Complainant deals in telecommunications industry and the term 3G refers to “third generation of wireless mobile telecommunications technology”. Therefore, the Panel holds that Respondent’s <qualcomm3g.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <qualcomm3g.com> 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 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 asserts that Respondent has no rights or legitimate interests in the <qualcomm3g.com> domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its QUALCOMM mark in any fashion. A lack of contradicting evidence in the record that Respondent was authorized to use the Complainant’s mark can be evidence of a lack of rights and legitimate interests. 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 can be 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 <qualcomm3g.com> WHOIS information lists “MAHDI MASOUDI” as the registrant. Therefore, the Panel holds that the Respondent is not commonly known by <qualcomm3g.com>.
The record shows that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the <qualcomm3g.com> domain name because Respondent is using the resolving website to advertise and sell electronic devices. Use of a domain name to advertise or sell goods or services in competition with a Complainant’s business cannot be construed as a bona fide offering of goods or services or any legitimate noncommercial or fair use of a disputed domain name. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 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).”). Therefore, the Panel holds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the <qualcomm3g.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that in light of the fame and notoriety of Complainant’s QUALCOMM mark, it is inconceivable that Respondent could have registered the <qualcomm3g.com> domain name without actual knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's rights in a mark prior to registering a domain name is adequate evidence of 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). Here, Complainant’s QUALCOMM mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1989. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <qualcomm3g.com> was registered and subsequently used.
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 <qualcomm3g.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: July 28, 2017
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