CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG
Claim Number: FA1712001764026
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Zhuang Yan / WANGYONG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <commscopes.com> and <commscope.club>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2017; the Forum received payment on December 21, 2017.
On December 26, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <commscopes.com> and <commscope.club> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 January 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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@commscopes.com, postmaster@commscope.club. Also on January 8, 2018, 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 February 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: Rule 3(b)(viii).
CommScope, Inc. of North Carolina (hereafter “CommScope”) is the owner of the COMMSCOPE family of trademarks used in connection with a variety of communications products and services. CommScope has used the COMMSCOPE mark in commerce continuously since at least as early as 1969. Additionally, CommScope is the owner of numerous registrations and applications for the mark COMMSCOPE in the United States.
In addition to the registrations above, CommScope has also used its COMMSCOPE mark in connection with a wide range of products and services. Examples of the products and services used in connection with the COMMSCOPE mark are depicted on CommScope’s website at www.commscope.com. The foregoing COMMSCOPE marks are hereinafter jointly referred to as CommScope’s “COMMSCOPE Marks.”
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix); NAF Supp. Rule 4(a).
Procedural Matters
As a procedural matter, Rule 3(c) of the Rules for the Uniform Domain Name Dispute Resolution Policy provide 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 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, Respondent’s address, telephone number, and fax number are the same for both the commscopes.com and commscope.club domain names (the “Domain Names”).[1] Additionally, the registrant name for the commscopes.com domain name is Nexperian Holding Limited, which is the administrative contact for the commscope.club domain name. Further, both Domain Names use the administrative email yuming@yinsibaohu.aliyun.com. In addition to the similarities from the WHOIS records, Respondent has engaged in a pattern of registering domain names using both the name Nexperian and another name as shown in the following proceedings:
- Tyro Payments Limited ACN 103 575 042 v. Du Zheng Min / Nexperian Holding Limited, D2017-0965 (WIPO July 10, 2017)
- Aviva Brands Limited v. Deng Guo Sen / Nexperian Holding Limited, D2017-0730 (WIPO May 30, 2017)
- SUUNTO OY v. duan xiaosong, duan xiao song / Nexperian Holding Limited, D2017-0670 (WIPO May 22, 2017)
- Van Cleef & Arpels, S.A. v. Nexperian Holding Limited, D2017-0441 (WIPO May 8, 2017)
- NXP B.V. v. Shen Zhen Shi Nan Huang Dian Zi You Xian Gong Si / Shenzhen nanhuang electronics co.ltd / Nexperian Holding Limited, D2017-0296 (WIPO Apr. 26, 2017)
Moreover, Respondent has changed its name from Nexperian Holding Limited to other names after disputes have begun, showing that the list above is merely a portion of the matters where Nexperian has used different names to mask its identity. See, e.g., The Toronto-Dominion Bank v. Zhang Xiao Min / Ba Wei Chuang Shen Zhen Ke Ji You Xian Gong Si, FA1744936 (Forum Oct. 2, 2017) (revealing registrant name as Nexperian Holding Limited after lifting privacy service). All of these cases show that both Domain Names are connected to the entity Nexperian Holding Limited.
The initial Complaint in this matter was filed on December 21, 2017. At that time, the WHOIS records were consistent. On December 26, 2017 at approximately 9:41:03 and 9:41:06, the WHOIS records were updated to contain different registrant details. The fact that both WHOIS records were updated after the filing of the initial Complaint at nearly the same time further establishes that a single respondent controls both domain names.
As an additional procedural matter, Rule 11(a) of the Rules for the Uniform Domain Name Dispute Resolution Policy provides that the Panel may determine the language of the proceeding with regard to the “circumstances of the administrative proceeding.” In this case, the registration agreement is offered in both English and Chinese. As described in more detail below, Respondent has engaged in the registration of multiple domain names in a common scheme to pass itself off as the associated brand owner. Multiple panels have addressed Respondent’s actions. Those panels have also found that Respondent is conversant in the English language. See Spike’s Holding, LLC v Nexperian Holding Limited, FA1736008 (Forum, July 21, 2017) (holding Respondent was proficient in the English language); Credit Karma, Inc. v. Nexperian Holding Limited / Zhang Cun Shuo, D2017-1820 (WIPO, Nov. 14, 2017) (adopting English as the language of the proceeding after holding prior UDRP proceedings involving Respondent were conducted in English and translating the complaint would cause an unnecessary burden on Complainant); Tecsis GmbH v. Nexperian Holding Limited / Vincent Zuo, Suzhou Sindy Automation Equipment Co., Ltd., D2017-1447 (WIPO, Oct. 10, 2017) (accepting filing of Complaint in English, response in Chinese, and rendering decision in English after finding Respondent would not be prejudiced by proceeding in the English language). In addition to the findings that Respondent is conversant in English, it would be an undue burden to require translation of the Complaint in this matter as neither CommScope nor its representative are conversant in Chinese. With the overwhelming evidence showing Respondent can respond in English, CommScope requests that the Panel proceed with the proceeding in the English language.
Factual and Legal Matters
With roots dating back to 1937, CommScope has played a role in virtually all of the world’s best communication networks. CommScope creates the infrastructure that connects people and technologies, including wired and wireless networks. CommScope was instrumental in creating cable TV infrastructure, the first wireless networks, the first data centers, and the first intelligent buildings. Today, CommScope offers a wide range of services under the COMMSCOPE Marks, including broadband solutions, enterprise solutions, and wireless solutions. CommScope has also used the COMMSCOPE mark in connection with a wide range of products, including antennas, cables, connectors, and networking systems, among others. Further details relating to CommScope’s various products and services offered in connection with the COMMSCOPE Marks are shown on CommScope’s website located at www.commscope.com.
CommScope has extensively used and advertised the distinctive COMMSCOPE brand in association with this wide range of products and services dating back to at least as early as 1969. Further, CommScope registered the domain name commscope.com in 1994. The COMMSCOPE trademark and trade name are highly regarded, representing valuable goodwill to CommScope.
CommScope has developed and marketed its business under the COMMSCOPE brand. CommScope has also invested substantial time, money, and effort in creating, marketing, and maintaining its website located at CommScope.com . CommScope has been featured and has received awards for its innovative solutions. For example, CommScope won the Communications Technology Company Award at the 2015 North Carolina Tech Awards. In 2016, the company was awarded the Large Technology Company Award. CommScope also operates a page on Twitter, which has over 14,000 followers and 35,000 tweets. Additionally, CommScope maintains a Facebook page at facebook.com/commscope that has over 4,500 likes. As a result of the extensive promotion of the COMMSCOPE brand and trade name, CommScope has developed substantial goodwill and customer loyalty under this trademark. COMMSCOPE is a distinctive, widely recognized trademark and was prior to Respondent’s registration of the comscopes.com domain name.
Respondent registered the domain name commscopes.com on February 15, 2017 and the domain name commscope.club on June 28, 2017 with HiChina under HiChina’s domain name policy and registration agreement. Respondent has no statutory or common law trademark rights or any other right or legitimate interest to CommScope’s COMMSCOPE Marks or in the infringing Domain Names. CommScope has not authorized or licensed Respondent to use the COMMSCOPE Marks or any derivative mark for any purpose. CommScope’s rights in the COMMSCOPE mark date back to at least as early as 1969. As such, there is no controversy as to the fact that CommScope has priority over Respondent with respect to the COMMSCOPE mark.
There is no evidence the Domain Names were registered for legitimate reasons. Rather, Respondent has registered multiple domain names that are confusingly similar to the COMMSCOPE Marks. The commscopes.com domain name simply adds an “s” to the COMMSCOPE trademark. The commscope.club domain name wholly incorporates the COMMSCOPE trademark. The evidence shows the Domain Names were registered to trade upon the goodwill associated with CommScope’s COMMSCOPE Marks, to prevent CommScope from using the Domain Names to direct consumers to CommScope’s products, and to divert traffic away from CommScope’s own websites. There is no other reason to register a domain name that is a typo of a coined term other than to trade on the rights of CommScope. Moreover, Respondent has never placed any information on a website associated with the Domain Name. Respondent’s lack of associating the Domain Names with any website shows that it does not have a legitimate right to the name. Respondent’s registration of the name trades on CommScope’s goodwill associated with its COMMSCOPE Marks and disrupts CommScope’s business in diverting traffic away from CommScope’s legitimate sites.
Further evidence of Respondent’s lack of legitimate rights and bad faith comes from Respondent’s registration of multiple domain names that trade on the goodwill of various brand owners. Respondent has been the registrant in 14 published decisions with the Forum and 18 published decisions with WIPO. The decisions show that Respondent has engaged in various attempts to pass itself off as a brand owner and obtain either financial information, click-throughs, or to prevent the brand owner from registering domain names associated with its marks. See Spike’s Holding, LLC v. Nexperian Holding Limited, FA1736008 (Forum July 21, 2017) (holding Respondent fraudulently obtained users’ personal and financial information through the guise of ordering items using the domain name); Skorpio Limited v. Nexperian Holding Limited / Long Zhi Chao, D2017-1690 (WIPO, Nov. 20, 2017) (holding Respondent engaged in a pattern of bad faith registrations; concluding Respondent traded on the goodwill of the brand owner); Tecsis GmbH v. Nexperian Holding Limited / Vincent Zuo, Suzhou Sindy Automation Equipment Co., Ltd., D2017-1447 (WIPO, Oct. 10, 2017) (holding Respondent engaged in bad faith registration); Beijing Wise World Technolgoy Co., Ltd. v. Wang Yong, wangyong, D2016-2125 (Dec. 13, 2016). Based on Respondent’s opportunistic bad faith and lack of legitimate rights in and to the Domain Names, CommScope requests that the Panel transfer the Domain Names to CommScope.
a. The Domain Names are Confusingly Similar to the COMMSCOPE Marks (UDRP Policy ¶4(a)(i)).
The Domain Names contain CommScope’s entire COMMSCOPE mark and are confusingly similar to the COMMSCOPE Marks pursuant to Policy ¶4(a)(i). The addition of a top level domain to a mark is also not a distinguishing feature. See 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.”) Thus, the commscope.club name is identical. Further, adding an “s” in the commscopes.com domain name does not serve to distinguish that name from the COMMSCOPE Marks. See Alta Vista Company v. Curtis Claar d/b/a Tae Po Promotions, FA095549 (Forum Oct. 24, 2000) (holding a mere plural of Complainant’s mark was “clearly confusingly similar” to the Complaint’s mark). Therefore, the requirement of confusing similarity is met.
b. Respondent Does Not Have Any Right or Legitimate Interest in the Domain Names (UDRP Policy ¶4(a)(ii)).
Respondent does not have any right or legitimate interest in the Domain Names. Respondent’s failure to make any demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services shows a lack of legitimate rights to the Domain Names pursuant to Policy ¶4(c)(i). Moreover, Respondent has no legitimate right to the Domain Names in that it has not used or received permission to use the mark pursuant to Policy ¶4(c)(ii). Furthermore, Respondent is not using the Domain Names for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent registered one domain name that was identical to COMMSCOPE Marks and a second domain name that contained a minor typo (the plural of the mar) of the COMMSCOPE Marks.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name). Respondent cannot meet this burden.
1. Respondent’s Failure to make Demonstrable Preparations to use the Website Associated with the Domain Names Shows a Lack of Legitimate Rights.
A respondent’s failure to use a domain name in connection with a bona fide offering of goods or services shows a lack of legitimate rights pursuant to Policy ¶(c)(i). In George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007), the panel held that the holding of an inactive website is not a protected use under Policy ¶¶4(c)(i) and 4(c)(iii). There are no legitimate rights gained by passively holding a domain name. Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“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).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that Respondent’s non-use of the disputed domain names demonstrates that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). A website that is under construction for an extended period of time shows a lack of legitimate rights.
Respondent does not have a bona fide interest in the Domain Names pursuant to Policy ¶¶4(c)(i) and 4(c)(iii) in that it engaged in typosquatting (adding a “s” to the mark COMMSCOPE) and failed to place any content on the websites associated with the Domain Names. There has been no content on either site since the Domain Names were registered. That inactive use of the Domain Names since the time of registration shows a lack of bona fide offering of goods or services and a lack of legitimate use. Respondent cannot escape the lack of legitimate rights in the site, particularly because the Domain Names are either a typo of CommScope’s trademarks or the identical mark. Indeed, by registering the Domain Name, Respondent took away CommScope’s ability to register the Domain Names and bring consumers to its site who mistyped the CommScope domain name commscope.com, thereby disrupting CommScope’s business. The Domain Names are not connected to a bona fide offering of goods or services and is not a legitimate use.
2. Respondent has no Legitimate Right in the Domain Names Because CommScope has not Granted Respondent Permission to use the Names.
Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the COMMSCOPE mark and has not received CommScope’s permission to use the COMMSCOPE Marks. Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name. Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of Respondent.” Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Forum March 29, 2005).
Respondent does not have a legitimate interest in the Domain Names. CommScope has not licensed its COMMSCOPE Marks or any variation thereof to Respondent. CommScope’s prior rights to the trade name and mark COMMSCOPE date back to at least as early as 1969. The COMMSCOPE mark is a coined term and has no meaning other than to designate CommScope’s own products and services. Thus, there would be no reason to use that mark other than to trade on CommScope’s goodwill and prevent CommScope from using the Domain Names to refer consumers to its website. Additionally, there is no evidence Respondent is commonly known by the name COMMSCOPE or the Domain Names. The WHOIS records at the time of the initial Complaint identified Respondent as Nexperian Holding Limited (amended to Wangyong) and Zhuang Yan, not Commsscope. Because Respondent is not commonly known by the name, there was no legitimate right in the names.
3. Respondent is not Making a Legitimate Non-Commercial or Fair Use of the Domain Names.
Respondent is also not using the Domain Names for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because it has placed no content on the site. Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (holding the failure to make an active use of a domain name that is identical to Complainant’s mark is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii)). Respondent is not making a legitimate, non-commercial, or fair use of the Domain Names because it has failed to place any content on the websites. That is not a legitimate use. Respondent’s failure to make a legitimate use shows a lack of legitimate rights. Transfer is appropriate.
c. The Domain Names have Been Registered and Used In Bad Faith (UDRP Policy ¶4(a)(iii)).
Respondent’s registration of the Domain Names in association with the COMMSCOPE Marks shows the registration was in bad faith. Respondent’s registration of a Domain Names with the actual knowledge of CommScope’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii). Respondent has also acted in bad faith pursuant to Policy ¶4(b)(iii) because it has failed to make active use of the Domain Names for an extended period of time.
1. Respondent’s Failure to Actively Use the Domain Names Shows Bad Faith.
Respondent’s failure to make active use of the Domain Names shows bad faith. DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s failure to make an active use of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use constitutes use in bad faith).
Respondent does not make active use of the Domain Names and has not made use of those Domain Names since it registered them. Respondent’s non-use and extended failure to actively use the Domain Names shows bad faith. Indeed, the facts show that Respondent registered the Domain Names because it knew CommScope had goodwill in connection to those names—thereby registering more than one domain name associated with the COMMSCOPE Marks. Respondent registered the Domain Names to trade upon that goodwill. By doing so, Respondent disrupted CommScope’s business by at least preventing consumers who mistakenly typed the Domain Names in a browser address from locating CommScope. Further, by registering the Domain Names, Respondent prevented CommScope from registering them.
2. Respondent’s Typosquatting Shows Bad Faith.
Respondent’s typosquatting shows bad faith pursuant to 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 typo squatting. Typo squatting, itself is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”). Further, Respondent’s diversion of traffic to a complainant’s competitors also shows bad faith pursuant to Policy ¶4(b)(iii). David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s website so as to come within the terms of Policy ¶4(b)(iii)); Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Respondent registered the domain name commscopes.com knowing it had a slight variation of CommScope’s own domain name, which alone shows bad faith. Respondent then registered a second domain name commscope.club, which shows Respondent not only knew of CommScope’s rights, but that it 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. In fact, consumers who mistakenly typed in the Domain Names would have been taken to a blank page, confusing the consumer that the CommScope site was down when in fact the consumer had simply keyed in an extra letter. That is bad faith.
3. Respondent Registered the Domain Names in Bad Faith Knowing of CommScope’s Trademark Rights in the COMMSCOPE Marks.
Respondent’s registration of the Domain Names was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent knew of CommScope’s rights and engaged in a pattern of such registration to prevent CommScope from using the Domain Name. “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).
Respondent had actual knowledge of CommScope’s trademark rights in its COMMSCOPE Marks prior to the registration of the Domain Names. Unlike the registration of a common name that may have more than one meaning, the COMMSCOPE mark is a coined term that only relates to CommScope. Further, the facts show that Respondent registered variations of the COMMSCOPE mark, which only have a similar meaning when referring to the COMMSCOPE Marks. Further, the fact that Respondent has engaged in the registration of multiple brand owners’ marks as described above shows the intent behind the registration—to trade on brand owner rights. The evidence shows Respondent had actual notice of CommScope’s trademark rights in and to the COMMSCOPE Marks at the time the Domain Names were registered. Further, Respondent has engaged in a pattern of registering Domain Names incorporating the COMMSCOPE Marks as well as a pattern of registering multiple marks of brand owners. Respondent’s registration of confusingly similar domain names shows bad faith based on its pattern of registering such names and pattern of conduct to harm the brand owners.
4. Respondent Acted in Bad Faith by Intentionally Choosing a Designation it knew to be Similar to CommScope’s Trademarks.
Policy ¶4(b) provides that bad faith registration can be found based on the four categories set forth in that section, without limitation. Additional evidence of bad faith can be inferred from Respondent’s choosing to use a designation that it knows to be similar to another’s registered trademark in order to attract consumers to its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where Respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to Complainant’s services and merely took advantage of Internet user mistakes).
Bad faith is shown because Respondent registered the Domain Names in order to trade on CommScope’s goodwill associated with its COMMSCOPE Marks. While Respondent did not take the step to create a website, it did take the step to register the Domain Names that it knew were confusingly similar to CommScope’s trademarks. Further, based on the number of domain names Respondent has registered recently (considering the multiple decisions against Respondent), Respondent’s practice is to register variations of brand names and use those names to harm the brand owner. Such a practice constitutes bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(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 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.”).
Preliminary Issue: Proceeding Language Request
Complainant requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request even though the official Registration Agreement is in Chinese (it should be noted a copy of the Registration Agreement is also provided in English by the Registrar, which suggests either language can be used although that is not what the Registrar stated when the registration was confirmed). It is established practice to take UDRP Rules 10(b) and (c) into consideration for determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are:
See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel may also consider the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party (especially in a default case). See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). It should be noted Respondent changed the WHOIS shortly after the Complaint was filed (and within minutes of each other). This suggests Respondent clearly understands English and the UDRP procedure quite well.
Pursuant to UDRP Rule 11(a), the Panel finds Complainant has submitted sufficient persuasive evidence Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides the proceeding should be in English.
Preliminary Issue: Multiple Respondents
Complainant claims the entities controlling the domain names at issue are the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Respondent’s address, telephone number, and fax number are the same for both of the disputed domain names, the registrant name for the <commscopes.com> domain name is Nexperian Holding Limited, which is the administrative contact for the <commscope.club> domain name. Both disputed domain names use the same administrative email address. Respondent has changed its name from Nexperian Holding Limited to other names after disputes have begun, meaning this is only a portion of the matters where Nexperian has used different names to mask its identity. See, e.g., The Toronto-Dominion Bank v. Zhang Xiao Min / Ba Wei Chuang Shen Zhen Ke Ji You Xian Gong Si, FA 1744936 (Forum, Oct. 2, 2017) (revealing registrant name as Nexperian Holding Limited after lifting privacy service).
The Panel finds the registrant of the two disputed domain names are the same person.
Complainant claims it established rights in the COMMSCOPE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,865,198, registered Nov. 29, 1994). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant established rights in the COMMSCOPE mark pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s domain names are identical or confusingly similar to Complainant’s COMMSCOPE mark. Respondent’s <commscopes.com> domain name is confusingly similar to Complainant’s mark because it merely adds the letter “s” to the end of the mark appends the gTLD “.com” the fully incorporated mark. The addition of a letter “s” to a fully incorporated mark does not sufficiently distinguish between a mark and a disputed domain name. See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs, 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). Respondent’s <commscope.club> domain name is identical to Complainant’s COMMSCOPE mark because it merely appends the gTLD “.club” to the fully incorporated mark (which is disregarded under a Policy ¶4(a)(i) analysis). See Compagnie des Montres Longines, Francillon S.A v. Jingjing Tang / Beijing shenmas clouds Network Technology Co., Ltd., FA 1591256 (Forum Dec. 29, 2014) (finding that the gTLD “.club” is one of the new gTLDs and should be disregarded when determining if a disputed domain name is confusingly similar to a complainant’s mark). Respondent’s <commscopes.com> and <commscope.club> domain names are identical or confusingly similar to Complainant’s COMMSCOPE mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its COMMSCOPE mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name, Respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that Respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as Respondent was not authorized to register domain names featuring Complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, Respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)). The WHOIS information of record for <commscopes.com> lists “WANGYONG” as the registrant, and the WHOIS information of record for <commscope.club> lists “Zhuang Yan” as the registrant. There is no obvious relationship to either of the disputed domain names. Respondent is not commonly known by the <commscopes.com> and <commscope.club> domain names.
Complainant claims Respondent is not using the <commscopes.com> and <commscope.club> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent has not made any demonstrable preparations to use the domain names because both resolve to non-existent websites. A domain name may be used for a variety of purposes, such as:
Using a domain name without a website generally indicates a respondent is not using the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that Respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). The screenshots of the <commscopes.com> and <commscope.club> domain names’ failure to resolve to websites indicate they display the error message “this site can’t be reached” without any other content. It seems clear the disputed domain names do not resolve to websites. Respondent has failed to use the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶4(c)(i) or Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has established a pattern of bad faith registration and use and engaged in bad faith conduct in the present case. UDRP ¶4(b)(ii) provides: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct…” [emphasis added]. That is not applicable in this case because Complainant already owns < commscope.com>. Therefore, this Panel declines to find bad faith on this ground.
Complainant claims Respondent registered and used the <commscopes.com> and <commscope.club> domain names in bad faith by disrupting Complainant’s business and diverting Internet users searching for Complainant’s website to Respondent’s website. Using a domain name to disrupt a complainant’s business indicates bad faith registration and use under EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”) It appears clear Respondent uses the domain names to disrupt Complainant’s business. Respondent registered and uses the domain names in bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent registered the domain names with full knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant’s rights in a mark indicates bad faith registration and use. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant’s mark is a unique term that only relates to Complainant’s CommScope business. Respondent registered domain names that are simple variations (and slight variations) of Complainant’s mark. Respondent registered and used the <commscopes.com> and <commscope.club> domain names in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use. See 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).”). Screenshots of the <commscopes.com> and <commscope.club> domain names show they fail to resolve to websites. Respondent registered and used the domain names in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <commscopes.com> and <commscope.club> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, February 14, 2018
[1] The contact details are based on the WHOIS records at the time the Complaint was filed on December 21, 2017. After the Complaint was filed, Respondent modified the WHOIS records for both Domain Names. The WHOIS records confirm that the modifications occurred within minutes of each other.
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