Cisco Technology, Inc. v. Voice IE
Claim Number: FA1805001789381
Complainant is Cisco Technology, Inc. (“Complainant”), represented by Rochelle D. Alpert of Morgan, Lewis & Bockius LLP, California, USA. Respondent is Voice IE (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ccde-labs.com> and <ccdelab.com>, registered with NameCheap, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2018; the Forum received payment on May 30, 2018.
On May 31, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <ccde-labs.com> and <ccdelab.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@ccde-labs.com, postmaster@ccdelab.com. Also on June 1, 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 June 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a publicly traded, well-regarded technology company, offering a wide range of computer software, hardware, telephony and networking products. Complainant owns exclusive rights to the well-regarded CCDE mark for use in connection with providing testing to determine professional skills in the field of networking equipment and computer systems, educational services, namely, conducting seminars, courses, and workshops in the field of networking equipment and computer systems, and for instructional books and manuals, printed guides for teachers and test booklets, all in the field of networking and computer systems. Complainant has rights in the CCDE mark based on its registration of the mark in the United States in 2010.
Complainant alleges that the disputed domain names are confusingly similar to its CCDE mark because each name contains the mark in its entirety, plus a hyphen, a generic term, and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not authorized by Complainant to use Complainant’s trademark nor is Respondent commonly known by the disputed domain names. Further, Respondent’s use of a disclaimer is evidence that Respondent has no rights in the mark. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to create a misleading affiliation with Complainant in order to sell unauthorized products. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and is using the disputed domain names in bad faith. Respondent uses the disputed domain names to pass off as Complainant in order to offer products competing with those of Complainant. Respondent seeks to obtain personal information from user who visit the resolving websites. Additionally, Complainant won a UDRP decision against Respondent for incorporating its CCIE trademark in a different domain name. Further, Respondent listed inaccurate contact information in connection with the domain registration for one of the disputed domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the CCDE mark prior to Respondent’s registration of the disputed domain names. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark CCDE and uses it to market a wide range of testing services to determine professional skills in the field of networking equipment and computer systems, and it markets related educational services.
Complainant’s rights in its mark date back to at least 2010.
The disputed domain names were registered in, respectively, 2013 and 2016.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving websites purport to be associated with Complainant and offer competing products and services. The resolving websites request users to provide personal information. The resolving websites prominently display Complainant’s marks.
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.”).
The disputed domain names are confusingly similar to Complainant’s CCDE mark because they incorporate the mark in its entirety, plus a hyphen, a generic term, and the “.com” gTLD. The addition of a generic term, a hyphen, and a gTLD are insufficient to distinguish a domain name from a mark according to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). Therefore, the Panel finds that the <ccde-labs.com> and <ccdelab.com> domain names are confusingly similar to Complainant’s mark according to Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use its marks in any way. Respondent is not commonly known by the disputed domain names: where a response is lacking, relevant WHOIS information may be used to identify the respondent. See 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). Additionally, lack of authorization from the complainant to use its mark may be evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information of record identifies the registrant of the names as “Voice IE.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate commercial or fair use. Complainant provides screenshots of the resolving websites which show Complainant’s logo prominently displayed along with workbooks for sale that directly compete with those offered by Complainant. Use of a domain name to host a webpage that displays products that appear to be associated with complainant or compete with the complainant’s business may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use of the name. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
In addition, Respondent is seeking personal information from each user by pretending to be somehow legitimately associated with Complainant CISCO. The “Workbook Policy” section on the resolving websites, states:
8. We do require CSCO [sic] ID, CCIE number and Official email id for security purposes. One should have CCDE written passed and CCDE lab should be booked for the coming quarter. We do not sell without these details. We do background verification of the details provided, so request to give us the correct CSCO [sic] ID and official email.
Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Respondent failed to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii).
For the reasons given above, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain names to disrupt Complainant’s business by selling competing goods and services. Use of a domain name to disrupt complainant’s business and to host a webpage offering competing goods and services may support a finding of bad faith under Policy ¶ 4(b)(iii). ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, also as already noted, Respondent registered and uses the disputed domain names to pass off as Complainant to derive commercial benefit. Use of a domain name to derive commercial benefit by confusing customers as to the source, sponsorship, affiliation, or endorsement of a respondent’s websites may be evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Accordingly, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Further, again as already noted, the disputed domain names resolve to websites that attempt to capture user’s personal information. This is evidence of bad faith registration and use. See Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant’s mark to fraudulently induce transfer of credit and personal identification information).
In addition, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: Respondent uses Complainant’s mark on the resolving websites, thus it knew of the mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per 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 Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent has engaged in bad faith and registration because it provided inaccurate contact information in connection with its domain name registration for the <ccde-labs.com> domain name. Specifically, Respondent provided a fake number and a fake address when registering the domain name: Respondent listed its phone number as “+1.9000000000” and its fax number as “+1.5555555555.” A respondent who provides false contact information may be found to have acted in bad faith under Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent has acted in bad faith per Policy ¶ 4(a)(iii) with regards to the <ccde-labs.com> domain name on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ccde-labs.com> and <ccdelab.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 26, 2018
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