L-com, Inc. v. Mehmet Ergin / ELCOM ASASOR INSAAT PAZARLAMA ITHALAT IHRACAT LTD STI.
Claim Number: FA1707001741043
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is Mehmet Ergin / ELCOM ASASOR INSAAT PAZARLAMA ITHALAT IHRACAT LTD STI. (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elcomlift.com>, registered with Nics Telekomünikasyon Tic Ltd. Sti.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2017; the Forum received payment on July 21, 2017.
On July 27, 2017, Nics Telekomünikasyon Tic Ltd. Sti. confirmed by e-mail to the Forum that the <elcomlift.com> domain name is registered with Nics Telekomünikasyon Tic Ltd. Sti. and that Respondent is the current registrant of the name. Nics Telekomünikasyon Tic Ltd. Sti. has verified that Respondent is bound by the Nics Telekomünikasyon Tic Ltd. Sti. 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 July 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@elcomlift.com. Also on July 27, 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 August 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of common law rights in the trademark L-COM, which it has used continuously since 1985 in connection with various goods and services relating to its business as a provider of wired and wireless connectivity products for the electronics and data communications industries. The company’s product portfolio encompasses a broad range of products, including cable assemblies, connectors, adapters, computer networking components, and custom products. More information can be found at URL http://www.l-com.com.
FACTUAL
AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
As noted above, L-com, Inc. owns common law and federal trademark registrations for the L-COM mark in both word (standard character) and logo/design form (in color, as well as black and white). As will be noted from the registrations, L-com, Inc. provides both goods and services under its L-COM trademark(s).
Respondent’s domain name is ELCOMLIFT.COM (the “Disputed Domain Name”). Therefore, the domain name include all words in Complainant’s mark as the second-level domain, as well as the generic term “LIFT”, and the .com generic top level domain. The Disputed Domain Name is similar in sight, sound, and meaning to Complainant’s L-COM trademark(s) for its connectivity and networking products and services. In particular, the dominant portion of ELCOMLIFT.COM is ELCOM, which is identical when pronounced, and is nearly identical in appearance and meaning to Complaint’s L-COM mark(s). Thus, Respondent’s Disputed Domain Name is identical or confusingly similar to Complainant’s L-COM trademark(s).
[b.] Why the Respondent should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
Complainant’s L-COM trademark has been in use since at least as early as 1985, and the attached U.S. trademark registration for the L-COM mark has a filing date in 2000 and a registration date of March 18, 2003. Further, L-com has operated its website at URL http://www.l-com.com since at least as early as 1996, as reflected in the corresponding WHOIS record. In contrast, Respondent registered ELCOMLIFT.COM on June 19, 2017, as reflected in the corresponding WHOIS record, attached hereto as Exhibit I.
Moreover, Respondent has no legitimate rights or interest in using the Disputed Domain Name for a legitimate purpose. Rather, directing one’s browser to URL http://www.elcomlift.com/ results in a return of “Web Sitemiz Yapım Aşamasında” which translates as “Web Site Contruction” webpage.
Complainant’s (i) use of its L-COM trademark(s) at least as early as 1985, (ii) operation of its website since at least as early as 1996, and (iii) registration of its trademarks since at least as early as 2003, predate Respondent’s registration of the Disputed Domain Name domain name in 2017. Therefore, Respondent knew or should have known of L-com, Inc.’s trademark rights in L-COM by virtue of L-com’s use, website at URL http://www.l-com.com, and/or L-com’s issued federal trademark registrations, which predate Respondent’s 2017 registration of the Disputed Domain Name.
These circumstances alone are sufficient to constitute a prima facie showing by Complainant of the absence of rights or legitimate interests in the Disputed Domain Name on the part of Respondent.
Further, Respondent makes no legitimate, noncommercial fair use of the domain name, nor has Respondent used the domain name in connection with its own business, nor has Respondent ever been known by the domain name nor acquired any trademark rights in any mark similar to the domain name.
[c.] Why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Respondent registered the Disputed Domain Name in bad faith, primarily for the purpose of disrupting the business of Complainant. In particular, Respondent seeks to misleadingly divert customers from Complainant, by using a domain name confusingly similar to Complainant’s mark, and to the domain name used by Complainant for its own website.
Respondent has no need for the Disputed Domain Name other than to disrupt the business of Complainant. For example, Respondent’s website at the Disputed Domain Name provide no more than an essentially blank “Under Construction” placeholder page. This disrupts the business of Complainant. For example, this result may lead a potential customer or contact to conclude that L-com is no longer in business, with the result that the customer may shop elsewhere. Further, since Complainant has no control over the Disputed Domain Name, this could be changed at any time. Respondent’s use of the Disputed Domain Name thereby improperly diverts those customers, and the technical and navigational difficulties with Respondent’s website lead to a loss of credibility and goodwill for Complainant.
Complainant submits that Respondent registered and used the domain name in bad faith to intentionally attract Internet users to its website or its online location for commercial gain (e.g., to attempt to sell its own goods/services and/or to deceive customers, potential customers or others). In particular, Respondent has done so by using the Disputed Domain Name in order to create a likelihood of confusion with Complainant’s L-COM trademark(s) as to the source of the Disputed Domain Name and website, or as to sponsorship, affiliation or endorsement by Complainant of Respondent’s Disputed Domain Name or website, and/or of products or services available at the Disputed Domain Name or website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
Complainant requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request even though the Registration Agreement is in Turkish. 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:
1. WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language,
2. filing of a trademark registration with an entity which shows an understanding of the English language, and
3. any evidence (or lack thereof) exhibiting Respondent’s understanding of the Turkish 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). The Panel may weigh the relative time and expense in enforcing the Turkish 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 points out Respondent’s company name on the landing page is in English—“ELCOM Lift Components”—and Respondent’s email address is in English—“info@elcomlift.com.” Furthermore, this is a case where only one side is presenting evidence (even though Respondent was given notice of this proceeding in Turkish).
Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been adduced by Complainant that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides the default proceeding should be in English.
(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 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 registered the L-COM mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s <elcomlift.com> is confusingly similar to the L-COM mark because the domain name incorporates the entire L-COM mark (less the hyphen) and merely differs through the addition of the letter “e,” the generic term “lift,” and the generic top-level domain “.com.” Panels have found the addition of generic words in a domain name does not prevent them from being confusingly similar from a mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The absence or presence of a hyphen and the addition of a single “e” do not matter in a Policy ¶4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Bath & Body Works Brand Management, Inc. v. zheng zhongxing, FA 1432320 (Forum Apr. 20, 2012) (finding that the prefix “e” was generic, and that such an addition to a mark did not distinguish the domain name from the complainant’s mark). Respondent’s <elcomlift.com> is confusingly similar to the L-COM mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has never been known by the domain name or acquired trademark rights in any mark similar to the domain name. WHOIS information associated with the disputed domain name identifies Respondent as, “Mehmet Ergin / ELCOM ASASOR INSAAT PAZARLAMA ITHALAT IHRACAT LTD STI.” Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name under Policy ¶4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶4(c)(ii).”). Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Respondent’s domain name resolves to a website that simply hosts an “under construction” webpage, which is not a bona fide offering or a noncommercial or fair use or use in connection with its business. “Under construction” webpages do not demonstrate rights and legitimate interests. See Hewlett-Packard Co. v. Rayne, FA 101465 (Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶4(a)(ii)); see also Broadcom Corp. v. Wirth, FA 102713 (Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent has acquired no rights through its non-use of the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the domain name in bad faith with the intention of disrupting Complainant’s business under Policy ¶¶4(b)(iii). Internet users will come to the disputed domain name. Instead of finding Complainant’s business, they will think Complainant is out of business (or Complainant’s web site has been shut down). Either way, this has a negative impact on Complainant’s business. This demonstrates bad faith registration and use (or lack thereof) under Policy ¶4(b)(iii).
Even if Respondent’s actions do not squarely come under Policy ¶4(b)(iii), they still fall within the penumbra of Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent has registered and used the domain name in bad faith.
Complainant claims Respondent registered and used the domain name in bad faith to profit from Internet user confusion under Policy ¶¶4(b)(iv). This Panel does not believe Complainant has managed to prove this part of its case. Complainant has not shown how Respondent is making a profit by having an “under construction” landing page. Therefore, this Panel declines to find bad faith on this ground.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <elcomlift.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, August 21, 2017
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