CommScope, Inc. of North Carolina v. Charlie Hang
Claim Number: FA1904001837201
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Charlie Hang (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commsocpe.com>, registered with Google 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2019; the Forum received payment on April 3, 2019.
On April 3, 2019, Google LLC confirmed by e-mail to the Forum that the <commsocpe.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 April 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@commsocpe.com. Also on April 3, 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 April 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant has played a role in virtually all of the world’s best communication networks. Complainant creates the infrastructure that connects people and technologies, including wired and wireless networks. Complainant has rights in the COMMSCOPE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,865,198, registered Nov. 29, 1994). See Compl. Ex. 1A. Respondent’s <commsocpe.com> domain name is confusingly similar to Complainant’s mark as it transposes the letter “c” and the letter “o” in Complainant’s mark while adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <commsocpe.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the domain name. See Compl. Ex. 9. Further, Respondent engaged in typosquatting by registering a domain name containing a minor typographical error.
Respondent registered and uses the <commsocpe.com> domain name in bad faith. Respondent registered the domain name to trade upon Complainant’s goodwill and misdirect traffic to its site, which disrupts Complainant’s business by at least preventing consumers who mistakenly typed the domain name in a browser address from locating Complainant. Further, Respondent fails to place any content on the resolving webpage associated with the domain name. See Compl. Ex. 9. Additionally, Respondent engaged in typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the COMMSCOPE mark given the goodwill associated with the distinctive mark and Respondent registering a typosquatted variation of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that supplies the communications infrastructure that connects people and technologies, including wired and wireless networks.
2. Complainant has established its trademark rights in the COMMSCOPE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,865,198, registered Nov. 29, 1994).
3. Respondent registered the <commsocpe.com> domain name on November 29, 2018.
4. Respondent has failed to make an active use of the domain name or place any content on the webpage to which the domain name resolves.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the COMMSCOPE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,865,198, registered Nov. 29, 1994). See Compl. Ex. 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). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the COMMSCOPE mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s COMMSCOPE mark. Complainant argues that Respondent’s <commsocpe.com> domain name is confusingly similar to Complainant’s mark as it transposes the letter “c” and the letter “o” in Complainant’s mark while adding the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds that the <commsocpe.com> domain name is confusingly similar to the COMMSCOPE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that 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 does have 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s COMMSCOPE trademark and to use it in its domain name, making only a minor spelling change that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <commsocpe.com> domain name on November 29, 2018;
(c) Respondent has failed to make an active use of the domain name or place any content on the webpage to which the domain name resolves;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <commsocpe.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Charlie Hang” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <commsocpe.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make an active use of the domain name. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage, which displays the error message “This site can’t be reached.” See Compl. Ex. 9. Accordingly, the Panel finds that Respondent fails to make any active use of the domain name, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii);
(g) Complainant argues that Respondent engaged in typosquatting by registering a domain name containing a minor typographical error. Registering a domain name containing common typing errors in a complainant’s mark can indicate a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). In this instance, the domain name differs from Complainant’s COMMSCOPE mark by transposition of the letter “c” with the letter “o” without any other changes or additions. As such, as the Panel agrees that Respondent’s domain name is a typosquatted version of Complainant’s mark, the Panel will use this fact as additional evidence of Respondent’s lack of rights and legitimate interests per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent registered the <commsocpe.com> domain name to trade upon Complainant’s goodwill and misdirect traffic to its site, which disrupts Complainant’s business by at least preventing consumers who mistakenly typed the domain name in a browser address from locating Complainant. Although disruption under Policy ¶ 4(b)(iii) is usually found with commercially competitive use of a domain name, Panels have held that such a use is not required. See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). Further, using a confusingly similar domain name to upon the goodwill of a complainant’s mark for commercial gain can demonstrate bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“The Panel finds that Respondent used the domain names to create confusion with Complainant’s DELL mark for commercial gain and that Respondent registered the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel notes that Complainant provided a screenshot of the resolving webpage, demonstrating the lack of substantive content displayed on the site. See Compl. Ex. 9. Accordingly, as it agrees, the Panel finds that Respondent disrupts Complainant’s business and attempted to trade off the goodwill associated with Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, Complainant argues that Respondent fails to place any content on the resolving webpage associated with the <commsocpe.com> domain name. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). 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).”). Once again, Complainant points to its provided screenshot of the resolving webpage displaying the message “This site can’t be reached.” See Compl. Ex. 9. As such, the Panel agrees that Respondent’s failure to use the domain name demonstrates Respondent’s bad faith under the Policy.
Thirdly, Complainant avers that Respondent engaged in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, the <commsocpe.com> domain name differs from the COMMSCOPE mark by transposition of the letter “c” with the letter “o” without any other changes or additions. Thus, as it agrees, the Panel finds that Respondent’s changes of Complainant’s mark in the domain name further demonstrates Respondent’s bad faith per Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the COMMSCOPE mark at the time of registering the <commsocpe.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the goodwill associated with the distinctive mark and Respondent registering a typosquatted variation of Complainant’s mark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the COMMSCOPE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <commsocpe.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 26, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page