LANDesk Software, Inc. v. Chun Lee / SINOBRY Technology Ltd.
Claim Number: FA1605001675264
Complainant is LANDesk Software, Inc. (“Complainant”), represented by Mark A. Miller of Holland & Hart LLP, Utah, USA. Respondent is Chun Lee / SINOBRY Technology Ltd. (“Respondent”), represented by Yanling Jiang of Ziliak Law, LLC, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wavlink.com>, registered with Bizcn.com, Inc.
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.
Jonathan Agmon as Chair-Panelist.
David S. Safran as Panelist.
Li Hu as Panelist
Complainant submitted a Complaint to the Forum electronically on May 16, 2016; the Forum received payment on May 16, 2016.
On May 23, 2016, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <wavlink.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 May 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@wavlink.com. Also on May 27, 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.
A timely Response was received and determined to be complete on June 16, 2016.
On June 28, 2016, pursuant to the Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Jonathan Agmon as Chair-Panelist; David S. Safran as Panelist; and Li Hu as Panelist.
On June 30, 2016 the Complainant has filed an Emergency Motion To Suspend or Terminate Proceedings in View of Concurrent Federal Litigation (the "Motion for Suspension").
On July 8, 2016, the Respondent has filed its Response to Complainant’s Emergency Motion for Suspension.
On July 13, 2016, the Administrative Panel (the "Panel") has denied the Complainant's Motion for Suspension.
On July 22, 2016 the Panel issued a decision extending the time to render its decision until July 26, 2016.
Having reviewed the communications records, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant argues that it was founded in 1992 in the United States of America. The Complainant argues that since 1992 the Complainant’s business has enjoyed double-digit growth and reported net sales of approximately $136 million during the period from 2011–2016.
The Complainant further argues that it owns a trademark registration—WAVELINK, in connection with the advertising, promotion, and sale of computer hardware and software relating to wireless network communications, since 1993 in the U.S. The Complainant also argues that since 2001 it has been using its registered W in a circle stylized mark in connection with its products and services.
The Complainant further argues that it has exclusive right to use the mark in connection with the goods set forth in the Registrations.
The Complainant further argues that it registered its domain name <wavelink.com> in 1998.
The Complainant further argues that the disputed domain name is virtually
identical to Complainant’s WAVELINK trademark, in which Complainant owns exclusive, nationwide federally registered rights dating back to as early as 1993.
The Complainant further contends that Respondent registered the disputed domain name on or about October 15, 2016, 11 years after the Complainant began use of its trademark, but that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that to its knowledge, the Respondent is not commonly known by the Disputed Domain Name.
The Complainant further contends that the Respondent is not and has never been associated or affiliated with Complainant.
The Complainant further contends that Respondent registered and is using the disputed domain name in bad faith.
The Complainant further argues that Respondent’s use of the disputed domain name purportedly to offer competitive goods for Respondent’s own benefit and to confuse Internet users as to Respondent’s affiliation with Complainant is further evidence of bad faith use and registration.
The Complainant contends that the Respondent had at least constructive notice of Complainant’s mark, and that the Respondent’s use of the disputed domain name, offering competitive goods for the Respondent’s own benefit, constitutes bad faith use and registration of the disputed domain name.
The Complainant also argues that the Complainant’s trademarks lead to the conclusion that the Respondent’s choice to register the disputed domain name, which is confusingly similar to the Complainant’s mark, intending to ride on Complainant’s goodwill, was done in an attempt to exploit for commercial gain, Internet traffic destined for the Complainant.
The Complainant has noticed the Panel that it has commenced a civil action in the United States District Court for the District of Utah Case No. 2:16-cv-00400-DN before Judge Nuffer, alleging trademark infringement of its WAVELINK mark, cybersquatting, and related claims in violation of the United States Trademark Act.
For all the above, the Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent argues that it has established Shenzhen Sinobry Technology Ltd. (“Sinobry”), in December 2010, that the disputed domain name was created on October 15, 2004 and that the Respondent started using the disputed domain name on July 3, 2012.
The Respondent further argues that it has legitimate rights in the disputed domain name. The Respondent contends that on October 21, 2012 Sinobry’s trademark applications "WAVLINK” and “WAVLINK 睿因” were registered by the State Intellectual Property Office (SIPO) of China.
The Respondent further argues that it has used its trademarks “WAVLINK” and “WAVLINK 睿因” in association with its business in China since 2012. The Respondent argues that it has been using its WAVLINK trademarks on JD.com and TMALL.com, receiving over 46,000 reviews during the past three years.
The Respondent further argues that it has lawful interest to register and use the disputed domain name, and that it's use of the disputed domain name is in connection with a bona fide offering of goods and services.
The Respondent further contends that the website under the disputed domain name was active as of April 25, 2016.
The Respondent further argues that it did not intend to profit by diverting customers from the disputed domain name, The Respondent argues that it offers significantly distinct and non-overlapping goods and services from those produced by the Complainant. Moreover, the Respondent further argues that the look and feel of each website is different and that the prospective clients are different (enterprises and sophisticated clients for the Complainant, and general online shoppers for the Respondent).
The Respondent further contends that the disputed domain name has been registered and used uninterrupted for almost four years.
The Respondent further wishes to challenge some of the evidence submitted by the Complainant.
For all of the above, the Respondent asks to deny the remedy requested by the Complainant.
C. Additional Submissions – the Motion to suspend or terminate the proceedings
On June 21, 2016, the Complainant filed the Motion for Suspension. On July 8, 2016, the Respondent has filed a timely Response to the Motion for Suspension. On July 13, 2016, the Panel notified the parties denying the Complainant's Motion for Suspension.
As paragraph 4(k) of the UDRP indicates, the UDRP does not bar either a complainant or the respondent from seeking judicial remedies outside the scope of these proceedings. These can be applied for by either party at any time. In addition, paragraph 18(a) of the Rules grants the Panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings.
WIPO’s UDRP 2.0 provides that “a panel may determine (as happens in rare instances) that a UDRP dispute cannot be evaluated separately from such ongoing court proceeding, and may terminate or suspend the UDRP case on that basis, normally (in the case of termination) without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of such court proceeding. As to any previous court proceedings, it is in the UDRP panel's discretion to determine what weight to ascribe thereto, in light of all circumstances.”
As the UDRP was designed to streamline disputes specifically concerning domain names in order to prevent cybersquatting, UDRP panels have found that there is no advantage in awaiting a federal court’s decision in reaching a decision under the Policy. (W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008; c.f. meriPlan Corp. v. Gilbert, FA105737 (Forum, Apr. 22, 2002)).
In this case, the present proceedings were initiated by the Complainant on May 16, 2016, four days AFTER it lodged its complaint in the US Court for the District of Utah for trademark infringement, deceptive trade practices, unjust enrichment, and cybersquatting. In its complaint before the US federal court, the Complainant requested a number of different remedies including preliminary and permanent injunctions, accounting and damages, to cite a few.
However, when the Complainant filed the instant proceedings it was in the position that there is no contradiction between these proceedings and those it has lodged a few days earlier before the United States federal court, thus confirming this Panel’s mutual jurisdiction with the US federal court under paragraph 4(k).
In its Motion for Suspension, Complainant reversed its position, seeking to have these proceedings suspended or terminated, based on the fact that the Respondent filed a motion to stay before the US federal court. The Complainant further filed an Opposition to the Respondent’s Motion to Stay where it once again confirms the possibility of “parallel” jurisdiction, though giving clear preference to that of the US federal court. The Respondent opposes the Motion to Suspend and requested the Panel to proceed to a decision.
The Panel does not consider this to be a “rare instance” in which the UDRP dispute cannot be evaluated separately from the federal action lodged by the Complainant. Indeed, the Complainant’s own filing of the present proceedings is the best indication that the Complainant is or at least was of the same position. The Panel is also in agreement with the Respondent that the current proceedings have a confirmed schedule, limited scope, would not hinder or duplicate the national proceedings filed before the US federal court. See Diamond Consortium, LLC v. Brian Cummings, FA1675435 (Forum June 24, 2016).
Thus, the Panel finds no compelling reason to exercise its discretion to suspend, or terminate the current proceedings and will continue below to render a decision on the UDRP complaint on the merits.
The Panel finds as follows:
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.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant presented evidence that it owns a number of trademark registrations, among others: US trademark registration no. 1959171 - WAVELINK, with the registration date of February 27, 1996, US trademark registration no. 2653644—W in a circle (design)—with the registration date of November 26, 2002.
The disputed domain name <wavlink.com> is missing the letter "e" from the Complainant's trademark—WAVELINK. The Panel accepts the arguments that the disputed domain name is confusingly similar to the registered trademark WAVELINK.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Thus, it is up to the Complainant to show a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the burden shifts to Respondent to show one of the three circumstances under paragraph 4(c) or any other basis for rights or legitimate interests. A prima facie case can be shown through the allegations made by the Complainant supported by the evidence filed.
The Complainant alleged that Respondent does not have rights or legitimate interest in the disputed domain name because it was not known by nor associated with the mark WAVELINK or the Complainant, the website under the disputed domain name was inactive, was not making a bona fide offering of goods and had at least a constructive notice of the Complainant and its marks.
To prove its case, the Complainant provided a WHOIS report indicating that the disputed domain name was registered long after the Complainant began using its WAVELINK mark (Exhibit 5) and a printout dated April 25, 2016 of the Website under the disputed domain name showing a No Gateway 502 error (Exhibit 7). However, the Complainant also presented a printout dated May 4, 2016, which shows that the Website under the disputed domain name was active (Exhibit 6).
The Respondent submitted a detailed response coupled with evidence showing it acquired trademark registration to its WAVLINK trademarks in China in 2012, and that it has been using WAVLINK and WAVLINK 睿因 Trademark in association with its business in China at least since 2012.
The Complainant has brought no affirmative evidence to support its claim that the Respondent had notice, constructive or otherwise, of the Complainant, prior to registering the disputed domain name and/or applying for the registration of Respondent's trademarks.
The Panel reviewed the goods offered by the Complainant and Respondent. The Complainant provides an array of mobility management, voice enablement and application streaming devices and services. The Complainant’s products are directed mainly at enterprise mobile deployment. The Respondent sells online IT peripherals accessories through third party web sites such as JD and TMALL to a wide range of consumers.
In view of the Panel's finding under the second condition of paragraph 4(a) of the Policy, there is no need for the Panel to make any additional findings in respect of the third condition, if the Respondent registered and used the disputed domain name in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wavlink.com> domain name REMAIN WITH Respondent.
Jonathan Agmon, Panelist
Dated: July 25, 2016
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