Logitech Europe S.A. v. Lisa Katz / Domain Protection LLC
Claim Number: FA1902001828646
Complainant is Logitech Europe S.A. (“Complainant”), represented by Christopher Dolan of Barnes & Thornburg LLP, Illinois, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluemicrophones.com>, registered with Sea Wasp, LLC.
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 February 5, 2019; the Forum received payment on February 7, 2019.
On February 7, 2019, Sea Wasp, LLC confirmed by e-mail to the Forum that the <bluemicrophones.com> domain name (the Domain Name) is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 February 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 5, 2019 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@bluemicrophones.com. Also on February 13, 2019, 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 March 6, 2109, 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 Name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its BLUE and BLUE MICROPHONES marks in connection with the distribution of microphones and related accessories. Complainant has rights in the BLUE and BLUE MICROPHONES marks through its registration of those marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s Domain Name is identical and confusingly similar to Complainant’s mark as it incorporates the BLUE MICROPHONES mark in its entirety, merely adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant licensed or otherwise permitted Respondent to use the mark. Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the Domain Name automatically redirects Internet users to a third-party website with links to competing web sites and websites which may install adware and malware viruses on the computers of consumers.
Respondent registered and uses the Domain Name in bad faith. The Domain Name automatically directs users to web sites that have the potential to install malware onto users’ computers. It also directs users to a third-party web site with advertising links, some of which direct visitors to the web pages of Complainant’s competitors. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the mark given Complainant’s prior registration of the BLUE mark with the USPTO.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
Baltic Latvian Universal Electronics LLC registered the mark BLUE (Reg. No. 2,770,612) with the USPTO on October 7, 2003, and the mark BLUE MICROPHONES (Reg. No. 3,820,962) with that same agency on July 20, 2010. See, Complaint Exhibit D. Those marks were assigned to Complainant on or about July 30, 2018. See, Complaint Exhibit D. Registration of a mark with the USPTO is sufficient to establish 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. . . . “). The record of assignment submitted with Complaint Exhibit D demonstrates that those rights are currently vested in Complainant.
Respondent’s Domain Name is identical and confusingly similar to Complainant’s BLUE MICROPHONES mark as it incorporates that mark in its entirety, merely adding the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the BLUE MICROPHONES 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. 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”). 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 interests. If 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made 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;
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, (ii) Respondent is not affiliated in any way with Complainant and Complainant has not licensed or authorized Respondent to use Complainant’s mark, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or as a legitimate noncommercial or other fair use. The Domain Name automatically redirects traffic to a third-party web site containing click-through links to web pages of companies that compete with Complainant and to web sites that may install adware and malware viruses on consumers’ computers. These allegations are supported by competent evidence.
The information provided to the Forum by the registrar lists “Lisa Katz” as the registrant and “Domain Protection LLC” as the registrant organization. Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with Complainant and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make these statements, and they are unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Exhibit E consists of screenshots of two different web sites that resolve from the Domain Name. One of them contains what appear to be click-through links for microphone accessories, USB converters, USB accessories, recording tools, music accessories and the like. Respondent is thus using the Domain Name to provide third-party advertising links, some of which offer goods in competition with those offered by Complainant. Using a domain name to offer links to services in direct competition with a complainant has often been held not to qualify as a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant.”).
The other web site resolving from the Domain Name displays the title “Security Check,” offers the visitor a box labelled “I’m Human” in which to click, and represents that as a means of reaching the visitor’s intended destination. Complainant claims that this link then installs malware onto the individual’s computer. Complainant then provides information relating to the specific scheme allegedly employed by Respondent. See, Complaint Exhibit F. Using a domain name to install malware onto a users’ computer has also been held not to qualify as a bona fide offering of goods and services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (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 Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site, as described in Policy ¶ 4(b)(iv). Respondent is obtaining commercial gain from its use of the Domain Name and the resolving web site. When a visitor to this web site clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the various companies forwarded from the web sites benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Further, Respondent uses the Domain Name to install malware onto users’ computers. Using an infringing domain name to install malware onto an individual’s computer clearly has the potential to disrupt a complainant’s business, and since Respondent in this case also offers links to competing businesses it is fair to consider it a competitor for the purposes of Policy ¶ 4(b)(iii). This places Respondent within the circumstances articulated by the Policy and is thus evidence of bad faith registration and use. Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”).
Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s BLUE mark at the time of registering the <bluemicrophones.com> domain name. The Panel rejects any argument of bad faith registration based upon constructive knowledge, as that has long been discredited by the majority of UDRP panels. Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."), 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.”). The question of actual prior knowledge in this case is interesting, given that the Domain Name was registered in February of 2005. See, Complaint Exhibit B. Complainant alleges that it used its BLUE mark in connection with microphones since 1989. Its registration for the mark BLUE was issued in 2003. See, Complaint Exhibit D. Several of Complainant’s trademark registrations were issued years after the Domain Name was registered, but the registration for BLUE MICROPHONES (Reg, No. 3,820,962) issued July 20, 2010 shows a first use for that mark in 1995 and a first use in commerce in 1997. See, Complaint Exhibit D. Given the content of one of the web pages resolving from the Domain Name at this time, it is certain that Respondent currently has actual knowledge of Complainant and its presence in the microphones industry, but that says nothing about the degree to which Complainant and its marks were generally known in 2005, or whether Respondent was involved in that industry or would have had any other reason to know about Complainant and its marks at that time. Complainant has the burden of proof, and it submitted no evidence of its standing or presence in the microphone industry in 2005. It might have provided data about its marketing, advertising, gross receipts, hit rates on its web site, or any other factors that might tend to demonstrate a notable, well-known presence in the microphone industry as of February 2005, but it did not. On the evidence available, the Panel concludes that Complainant has failed to prove that Respondent knew of Complainant’s marks when it registered the Domain Name.
For the reasons set forth above in the findings relative to Policy ¶¶ 4(b)(iii) and (iv), the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Accordingly, it is Ordered that the <bluemicrophones.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: March 8, 2019
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