Nest Labs, Inc. v. Son Cao
Claim Number: FA1804001784428
Complainant is Nest Labs, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, District of Columbia, USA. Respondent is Son Cao (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nest-hello.com> (the Domain Name) registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On May 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nest-hello.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@nest-hello.com. Also on May 2, 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 May 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the NEST mark registered, inter alia in the USA with first use recorded as 2011. Earlier this year the Complainant began offering the NEST HELLO video doorbell and has common law rights in the NEXT HELLO mark. It owns nest.com.
The Domain Name registered in 2018 has been pointed to a similar web site purporting to offer the NEST HELLO product with certain content copied directly from the Complainant’s web site giving the impression of an official site of the Complainant. The Respondent is not a distributor of the Complainant’s product and is taking personal information from Internet users.
The Domain Name is confusingly similar to the Complainant’s registered NEST mark and to its unregistered NEST HELLO mark. The addition of a hyphen and the gTLD do not distinguish the Domain Name from the Complainant’s marks.
Complainant has not authorised the Respondent to use the Complainant’s marks. Respondent is not commonly known by the Domain Name.
Using a site similar to the Complainant to pass a site off as connected to a Complainant cannot be bona fide offering of goods and services or a legitimate non commercial fair use. It is causing confusion on the internet and is bad faith registration and use. There is also the possibility that the information gathered may be used for phishing purposes. The copying of material from the Complainant’s web site shows the Respondent is aware of the Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the NEST mark registered, inter alia in the USA with first use recorded as 2011. Earlier this year the Complainant began offering the NEST HELLO video doorbell and has common law rights in this name. It owns nest.com.
The Domain Name has been used for a web site purporting to offer a NEST HELLO product with material copied from the Complainant’s site without authorisation.
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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's NEST mark (which is registered in USA for home monitoring services with first use recorded as 2011), a hyphen, the generic word ‘hello’ and the gTLD .com. The Complainant’s offers a NEST HELLO product to its customers and appears to have common law rights in that mark also.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the Complainant).
The Panel agrees that the addition of the generic term ‘hello’ and a hyphen to the Complainant's NEXT mark does not distinguish the Domain Name from the Complainant's registered trade mark pursuant to the Policy. In fact it may confusion as the Complainant offers a NEXT HELLO product. See also Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)
The gTLD .com does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). Accordingly the Domain Name also appears to be identical to the Complainant’s unregistered NEXT HELLO mark.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s NEXT registered mark and identical to the Complainant’s unregistered NEXT HELLO mark.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name.
The web site attached to the Domain Name uses the Complainant's NEXT and NEXT HELLO marks and has copied material from the Complainant’s web site so that the Respondent’s site appears to be an official site of the Complainant. It does not make it clear that there is no commercial connection with the Complainant.The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s marks and material from the Complainant’s web site without permission. The use of the Complainant's NEXT and NEXT HELLO marks on the Respondent's web site and the fact that material has been copied from the Complainant’s web site shows that the Respondent is aware of the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(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 <nest-hello.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 25, 2018
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