Google Inc. v. Md. Ashfak Ahmed Khan / Protex Group USA Inc.
Claim Number: FA1602001661652
Complainant is Google Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Md. Ashfak Ahmed Khan / Protex Group USA Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nexususa.mobi>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2016; the Forum received payment on February 18, 2016.
On February 19, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <nexususa.mobi> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2016 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@nexususa.mobi. Also on February 19, 2016, 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 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the NEXUS mark in connection with its line of mobile devices. Complainant has registered the NEXUS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,126,149, registered August 8, 2006), which demonstrates rights in the mark. Respondent’s <nexususa.mobi> domain name is confusingly similar to Complainant’s NEXUS mark as it incorporates the mark entirely and adds the geographic abbreviation “usa” and the generic top-level domain name (“gTLD”) “.mobi.”
Respondent has no rights or legitimate interests in the <nexususa.mobi> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use through the <nexususa.mobi> domain name. Rather, the domain name resolves to a website containing mobile devices in direct competition with those of Complainant and marketed under Complainant’s NEXUS mark.
Respondent registered and is using the <nexususa.mobi> domain name in bad faith. Respondent’s use of the <nexususa.mobi> domain name serves as a disruption of Complainant’s legitimate business purposes. Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent had actual or constructive notice of the NEXUS mark and Complainant’s rights therein.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <nexususa.mobi> domain name.
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 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the NEXUS mark in connection with its line of mobile devices. Complainant claims it has registered the NEXUS mark with the USPTO (e.g., Reg. No. 3,126,149, registered August 8, 2006), which it contends demonstrates its rights in the mark. Past Panels have found registration with the USPTO to be sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant has established rights in the NEXUS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nexususa.mobi> domain name is confusingly similar to Complainant’s NEXUS mark as it incorporates the mark entirely and adds the geographic abbreviation “usa” and the gTLD “.mobi.” Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). The Panel therefore finds that Respondent’s <nexususa.mobi> domain name is confusingly similar to the NEXUS mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <nexususa.mobi> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the <nexususa.mobi> domain name lists “Ashfak Ahmed Khan” as registrant of record. Complainant states that it has not given Respondent permission to use its NEXUS mark. Respondent has not submitted a response in this proceeding to refute any of Complainant’s allegations. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ (4)(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <nexususa.mobi> domain name. Complainant contends that the domain name resolves to a website containing offers for sale of mobile devices and tablets under the NEXUS mark, which purportedly use the Android operating system in direct competition with those offered by Complainant on its website. Complainant further contends that by using the NEXUS mark and the multicolored “X” logo Complainant uses with its mark, Respondent is attempting to pass itself off as Complainant. Past panels have found that use of a disputed domain name to sell competing products or to pass oneself off as a complainant by using its mark and logo do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent’s <nexususa.mobi> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant contends that Respondent’s registration and subsequent use of the <nexususa.mobi> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing products. Panels have found that a respondent’s purported diversion of Internet users to its own website in direct competition with the website of a complainant constitutes bad faith disruption under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) Therefore, the Panel finds that Respondent’s use of the <nexususa.mobi> domain name constitutes bad faith under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent has attempted to attract Internet users for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the domain name to create a likelihood of confusion with Complainant and Complainant’s mark in order to profit from users looking for Complainant’s site who find Respondent’s site and are prompted to buy competing mobile devices that are marketed as being associated with Complainant’s NEXUS mark. The Panel agrees with Complainant’s argument and finds that Complainant’s use of Internet user confusion that results in redirection to Respondent’s site, which sells mobile devices that are associated with Complainant, constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant also contends that in light of the fame and notoriety of Complainant's NEXUS mark, it is inconceivable that Respondent could have registered the <nexususa.mobi> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <nexususa.mobi> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Karl V. Fink (Ret.), Panelist
Dated: March 21, 2016
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