TechSmith Corporation v. yutaka yoshida / THE ONE THING
Claim Number: FA1804001782549
Complainant is TechSmith Corporation (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is yutaka yoshida / THE ONE THING (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mac-camtasia.info>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 April 19, 2018; the Forum received payment on April 19, 2018.
On April 20, 2018, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <mac-camtasia.info> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2018 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@mac-camtasia.info. Also on April 20, 2018, 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 May 15, 2018, 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 owns and operates a computer and software business which uses the CAMTASIA mark in connection with its products and services. Complainant has rights in the CAMTASIA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,488,689, registered Sep. 11, 2001). See Amend. Compl. Annex A. Respondent’s <mac-camtasia.info> domain name is identical and/or confusingly similar to Complainant’s CAMTASIA mark as Respondent merely adds the descriptive term “mac,” a hyphen,” and a “.info” generic top level domain (“gTLD”) to Complainant’s mark.
ii) Respondent has no rights or legitimate interests in the <mac-camtasia.info> domain name. Respondent is not authorized or permitted to use Complainant’s CAMTASIA mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent features unauthorized, competing pay-per-click hyperlinks at the disputed domain name.
iii) Respondent registered and is using the <mac-camtasia.info> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract users to the disputed domain name which features unauthorized, competing pay-per-click hyperlinks. Furthermore, Respondent had actual knowledge of Complainant’s rights in the CAMTASIA mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding. The Forum received emails from Respondent which are identified in this proceeding as “Other Correspondence.” In these emails, Respondent purports to consent to the transfer of the domain name <mac-camtasia.info>, stating in relevant part, ‘I do not intend to dispute. I agree to transfer the domain name <mac-camtasia.info> to TechSmith Corporation for free. I'd like to start domain transfer procedure, is it possible?’
Respondent further states in the email correspondence to the Forum that “I have been using the Mac version of ‘Camtasia’ since March 13, 2009, and I am a big fan of it. Because the Mac version has only English one, I wanted Japanese people to use ‘Kamutasia’ a lot, I thought I would write a blog about how to use it. I obtained a domain containing ‘mac’ and ‘camtasia’ considering SEO.”
Preliminary Issue 1: Language of the Proceeding
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 Japanese 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 Japanese 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 may weigh the relative time and expense in enforcing the Japanese 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 requests that the language of this administrative proceeding proceed in the English language on the grounds the all content associated with the disputed domain name is in English only as indicated in Annex C, and a sampling of which is as follows: “How Do I Do A Screencapture On Mac”, “How Do You Take Screenshots on a Mac”, “Screens”, “Screencaptures,” “Alternative Screen Recorder,” “Video Editor -Easy and Low Cost” “Free Website Monitoring.” Complainant further contends that the prevalent use of English as the only language used in the content/link/ads associated with disputed domain name clearly evidences the fact that the Respondent is more than capable of understanding English and therefore, the proceedings should be conducted in English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: Consent to Transfer
The Forum received emails from Respondent which are identified in this proceeding as “Other Correspondence.” In these emails, Respondent purports to consent to the transfer of the domain name <mac-camtasia.info>, stating in relevant part, ‘I do not intend to dispute. I agree to transfer the domain name <mac-camtasia.info> to TechSmith Corporation for free. I'd like to start domain transfer procedure, is it possible?’
Respondent seems to consent to transfer <mac-camtasia.info> to Complainant. However, after the initiation of this proceeding, GMO Internet, Inc. d/b/a Onamae.com placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel could forego the traditional UDRP analysis and order an immediate transfer of <mac-camtasia.info>. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Despite such Respondent’s consent, the Panel finds it appropriate to proceed to a substantive decision on the merits because i) while consenting to the requested remedy, Respondent has expressly disclaimed any bad faith; ii) Complainant has not agreed to accept such consent; and iii) the Panel wishes to be certain that Complainant has shown that it possesses relevant trademark rights. See ¶4.10 ‘WIPO Jurisprudential Overview 3.0’ stating (despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.).
1. Respondent registered the <mac-camtasia.info> domain name on January 10, 2018.
2. Complainant has established rights in the CAMTASIA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,488,689, registered Sep. 11, 2001).
3. The WHOIS information for the disputed domain name identifies Respondent as “yutaka yoshida / THE ONE THING.”
4. Respondent features competing, pay-per-click hyperlinks at the disputed domain name’s resolving website.
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 (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 claims to have rights in the CAMTASIA mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its USPTO registrations for the CAMTASIA mark (e.g., Reg. No. 2,488,689, registered Sep. 11, 2001). See Amend. Compl. Annex A. Therefore, the Panel finds Complainant has sufficiently demonstrated its rights in the CAMTASIA mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <mac-camtasia.info> domain name is identical and/or confusingly similar to Complainant’s CAMTASIA mark as Respondent merely adds a descriptive term, hyphen, and gTLD to the mark. Such changes to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues Respondent merely added the term “mac,” a hyphen, and the gTLD “.info.” Therefore, the Panel finds Respondent’s <mac-camtasia.info> domain name is identical and/or confusingly similar to Complainant’s CAMTASIA 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), 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”).
Complainant asserts Respondent has no rights or legitimate interests in the <mac-camtasia.info> domain name. Complainant argues Respondent is not authorized or permitted to use Complainant’s CAMTASIA mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Complainant provides a copy of the WHOIS information for the disputed domain name which identifies Respondent as “yutaka yoshida / THE ONE THING.” See Amend. Compl. Annex B. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent fails to use the <mac-camtasia.info> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant contends Respondent features competing, pay-per-click hyperlinks at the disputed domain name’s resolving website. Use of a domain name to resolve to a website featuring competing hyperlinks may not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the <mac-camtasia.info> website, which indicates that site is a parked page with hyperlinks to various third-party websites, including Complainant’s website. See Amend. Compl. Annex A. Therefore, the Panel finds Respondent’s use of competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 claims Respondent registered and is using the <mac-camtasia.info> domain name in bad faith. Complainant argues Respondent’s use of the domain name disrupts Complainant’s business and diverts users to a parked webpage that features competing, pay-per-click hyperlinks. Use of a disputed domain name to disrupt a complainant’s business and divert users to a website featuring competing hyperlinks may indicate bad faith under Policy ¶¶ 4(b)(iii).See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). As stated previously, Complainant provided screenshots of the <mac-camtasia.info> website, which features hyperlinks related to Complainant’s business. See Amend. Compl. Annex C. Therefore, the Panel finds that Respondent attempted to disrupt Complainant’s business and hold that Respondent engaged in Policy ¶ 4(b)(iii) bad faith registration.
Next, Complainant argues that Respondent is using the disputed domain name to create confusion with Complainant’s CAMTASIA mark for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship or affiliation therein for a respondent’s commercial benefit may evidence bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant alleges that screenshots of the disputed domain name’s resolving website indicate that the site hosts pay-per-click hyperlinks that compete with Complainant’s business. See Amend. Compl. Annex C. As such, the Panel finds that Respondent attempted to create confusion with Complainant’s mark for commercial gain and holds that Respondent registered the domain name in bad faith bad faith per Policy ¶¶ 4(b)(iv).
Furthermore, Complainant argues Respondent had actual knowledge of Complainant’s rights in the CAMTASIA mark prior to registering the <mac-camtasia.info> domain name. The Panel observes that while constructive notice is insufficient for a finding of bad faith, actual knowledge is sufficient for a finding of bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that given Respondent’s prominent display of the CAMTASIA mark at the disputed domain name’s resolving website, Respondent must have had actual knowledge of Complainant’s rights in the mark. See Amend. Compl. Annex C. Thus, the Panel infers that Respondent had actual knowledge of Complainant’s mark prior to the disputed domain name’s registration and holds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mac-camtasia.info> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 18, 2018
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