CommScope, Inc. of North Carolina v. VistaPrint Technologies Ltd / Cimpress Schweiz GmbH
Claim Number: FA1712001764018
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is VistaPrint Technologies Ltd / Cimpress Schweiz GmbH (“Respondent”), Bermuda / Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <conmscope.com>, <commsc0pe.com>, and <c0mmscope.com>, registered with Tucows Domains Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on December 21, 2017; the Forum received payment on December 21, 2017.
On December 22, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <conmscope.com>, <commsc0pe.com>, and <c0mmscope.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2018 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@conmscope.com, postmaster@commsc0pe.com, postmaster@c0mmscope.com. Also on December 29, 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 January 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 creates the infrastructure that connects people and technologies, including wired and wireless networks. Complainant registered the COMMSCOPE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,865,198) on November 29, 1994. Respondent’s <conmscope.com>, <commsc0pe.com>, and <c0mmscope.com> domain names (the “Domain Names”) are confusingly similar to Complainant’s mark as they all replace one letter with either a similar letter or number and append the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its COMMSCOPE mark. Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, they all resolve to inactive web sites.
Respondent registered and uses the Domain Names in bad faith. Respondent registered the Domain Names in November 2017. It is not making any active use of the web sites that resolve from them. By configuring the Domain Names as it did, Respondent is engaging in typosquatting. This demonstrates its prior knowledge of Complainant and its rights in the COMMSCOPE mark, and further prevents Complainant from registering the Domain Names itself. Further, Respondent registered the Domain Names to harm Complainant and in order to trade on Complainant’s goodwill associated with its COMMSCOPE mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Multiple Domains
Rule 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Prior panels have found that the registration details may differ provided there is evidence that the Respondent is the same entity. Radisson Hotels Int’l, Inc. v. Yue Mei Wang et al., FA1615349 (Forum June 1, 2015) (holding consolidation proper where domain names are effectively controlled by the same person and/or entity). Here, the email address for all three Domain Names is the same, namely csadmin@vistaprint.com. (See, Complaint Exhibits 7A-7C.) Further, the Administrative contact details for all three Domain Names is 275 Wyman St. (Ibid.) The phone numbers, fax numbers, and email addresses for the Administrative contacts are the same, as is the technical contact information for all three Domain Names. (Ibid.) The Domain Names are all registered at the same registrar, namely Tucows. (Ibid.) Moreover, all three Domain Names were registered within the same week, between November 7, 2017 and November 14, 2017. (Ibid.) The foregoing evidence shows that the Domain Names are all owned by the same entity.
Merits of the Case
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
In view of Respondent's failure to submit a response, the Panel will 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 the COMMSCOPE mark with the USPTO”) (Reg. No. 1,865,198) on November 29, 1994. See, Complaint Exhibit 1A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i)”). Complainant has established rights in the COMMSCOPE mark for the purposes of Policy ¶ 4(a)(i).
The Domain Names contain Complainant’s entire COMMSCOPE mark and are confusingly similar to that mark. The addition of a top level domain to a mark is not sufficient to distinguish a domain name from a complainant’s mark. Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”). Further, the replacement of one letter (“n” for “m” and “0” for o”) does not distinguish the Domain Names from the COMMSCOPE Mark for the purposes of Policy ¶ 4(a)(i). Quicken Loans Inc. v. Cimpress Schweiz GmbH, FA1730676 (Forum June 7, 2017) (holding substitution of the letter “o” for “a” and addition of .com top-level domain was insufficient to distinguish the domain name from the Complaint’s mark).
Based upon the foregoing, the Panel finds that the Domain Names are confusingly similar to the COMMSCOPE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven to exist can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers of to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not commonly known by the Domain Names, (ii) Complainant has not authorized Respondent to use its COMMSCOPE mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the resolving web sites are inactive, and this does not qualify as a bona fide offering of goods and services, or a legitimate noncommercial or fair use of a domain name. These allegations are supported by competent evidence. The WHOIS identifies “VistaPrint Technologies Ltd” as the registrant for <conmscope.com>, and “Cimpress Schweiz GmbH” as the registrant for <commsc0pe.com> and <c0mmscope.com>. See, Complaint Exhibit 7A-7C. Respondent registered the Domain Names in November of 2017. (Ibid.) As Complainant argues, no evidence exists to show that Respondent has ever been legitimately known by the COMMSCOPE mark. Further, Complainant states that it has never authorized Respondent to use its COMMSCOPE mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Names all resolve to websites which contain the error message “This site can’t be reached.” See, Complaint Exhibits 9A-9C. Failure to make active use of a confusingly similar domain name is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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)”). Respondent is not using any of the Domain Names to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Exhibits 9A-9C to the Complaint are screen shots of the web sites resolving from the Domain Names. They show only the words “This site can’t be reached.” They are clearly inactive web sites. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. 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), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum December 13, 2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
The evidence of typosquatting discussed above in connection with the Policy ¶4(a)(i) analysis is also relevant to the analysis of bad faith. Respondent registered the Domain Name <conmscope.com> knowing it had only a slight variation of CommScope’s own domain name, <commscope.com>. It registered the Domain Names <commsc0pe.com> and <c0mmscope.com> to perpetuate further its scheme to defraud consumers. Respondent’s typosquatting shows bad faith pursuant to Policy Policy ¶ 4(b)(iii). Zone Labs, Inc. v. Zuccarini, FA190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Additionally, Respondent’s registration of multiple domain names nearly identical to Complainant’s COMMSCOPE mark not only shows its actual knowledge of Complainant and its mark when it registered the Domain Names, but also shows Respondent intended to harm CommScope by taking away domain names that CommScope could otherwise register. Respondent used the Domain Names to divert traffic that should have reached CommScope. Consumers who type in the Domain Names would be taken to a blank page, confusing the consumer into believing that the CommScope site was down when in fact the consumer had simply keyed in the wrong letter (or a number) by mistake. That is bad faith.
Registering infringing domain names with actual knowledge of a complainant’s mark is evidence of bad faith. 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.).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <conmscope.com>, <commsc0pe.com>, and <c0mmscope.com> domain names be TRANSFERRED to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: January 24, 2018
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