TechSmith Corporation v. Cao Xiaoxia
Claim Number: FA1705001732972
Complainant is TechSmith Corporation (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is Cao Xiaoxia
(“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <camtasia.studio>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2017; the Forum received payment on May 23, 2017.
On May 23, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <camtasia.studio> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2017 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@camtasia.studio. Also on May 26, 2017, 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 June 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, TechSmith Corporation, is a software company based in Okemos, Michigan, USA. In connection with this business, Complainant uses the CAMTASIA and CAMTASIA STUDIO marks to promote its goods and services. Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., CAMTASIA—Reg. No. 2,488,689, registered Sept. 11, 2001; CAMTASIA STUDIO—Reg. No. 2,900,325, registered Nov. 2, 2004). Respondent’s <camtasia.studio> domain name is identical to Complainant’s CAMTASIA STUDIO mark as it contains the mark in its entirety with the addition of a period, turning the “studio” portion into a generic top-level-domain (“gTLD”). Further, Complainant argues, <camtasia.studio> is confusingly similar to Complainant’s CAMTASIA mark as it appropriates the mark in its entirety and appends the gTLD “.studio.”
ii) Respondent lacks rights and legitimate interests in <camtasia.studio>. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register a domain name reflecting its mark. Respondent failed to use <camtasia.studio> in connection with a bona fide offering of goods or services or for a legitimate or noncommercial fair use. Instead, <camtasia.studio> resolves to a page offering domain names for sale for Respondent’s commercial gain unrelated to Complainant’s business.
iii) Respondent registered and uses <camtasia.studio> in bad faith. Respondent created a likelihood of confusion between the mark and the <camtasia.studio> domain from which Respondent is commercially benefitting.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered <camtasia.studio> on March 26, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
Preliminary Issue: Language of Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant contends Respondent is conversant in English based upon the fact that the domain name itself is in English. The resolving website for the disputed domain name is in both English and Chinese. Respondent offers domain name purchasing tutorials and domain names in English. Respondent displays its copyright notice and other domain names in English.
In the absence of a Response and given no objection to Complainant's request for the language of proceeding, after considering the circumstance of the present case, pursuant to UDRP Rule 11(a), the Panel decides English to be the language of the proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
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.”).
Complainant asserts rights in the marks based upon registration with the USPTO (e.g., CAMTASIA—Reg. No. 2,488,689, registered Sept. 11, 2001; CAMTASIA STUDIO—Reg. No. 2,900,325, registered Nov. 2, 2004). Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See 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. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the CAMTASIA and CAMTASIA STUDIO marks.
Next, Complainant argues Respondent’s <camtasia.studio> domain name is confusingly similar to Complainant’s CAMTASIA STUDIO mark as it contains the mark in its entirety with the addition of a period, turning the “studio” portion into a gTLD. Further, Complainant argues, <camtasia.studio> is confusingly similar to Complainant’s CAMTASIA mark as it incorporates the mark in its entirety and appends the gTLD “.studio.” The addition of a period to a mark does not remove the result from the realm of confusing similarity; likewise, addition of a gTLD does not remove a mark from the realm of confusing similarity per Policy ¶ 4(a)(i). See Memoirs, Inc. v. Patel, FA 98244 (Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In any event, the Panel finds Respondent’s domain name to be confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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 (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 (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 Respondent lacks rights and legitimate interests in <camtasia.studio> as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register a domain name reflecting its mark. Where a Response is lacking, WHOIS information can substantiate a finding that a Respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record names “Cao Xiaoxia” as the registrant of the disputed domain name. As such, the Panel finds Respondent is not commonly known by <camtasia.studio>.
Next, Complainant argues Respondent failed to use <camtasia.studio> in connection with a bona fide offering of goods or services or for a legitimate or noncommercial fair use. Diversion of Internet users seeking a complainant’s website to a respondent’s for said respondent’s commercial gain indicates a lack of rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) & (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel notes that the domain name <camtasia.studio> resolves to a page offering domain names for sale for Respondent’s commercial gain unrelated to Complainant’s business. As such, the Panel agrees and finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses <camtasia.studio> in bad faith as Respondent created a likelihood of confusion between the mark and the <camtasia.studio> domain from which Respondent is commercially benefitting. Use of a confusingly similar domain name to resolve to unrelated hyperlinks indicates bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel recalls that Respondent resolves to a sales page for multiple domain names, all of which are unrelated to Complainant’s business. The Panel finds Respondent registered and used <camtasia.studio> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <camtasia.studio> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 26, 2017
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