Cisco Technology, Inc. v. Muhammad Imran
Claim Number: FA1807001797853
Complainant is Cisco Technology, Inc. (“Complainant”), represented by G. Rahul of Lall & Sethi, India. Respondent is Muhammad Imran (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webexdesigner.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2018; the Forum received payment on July 21, 2018.
On July 23, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <webexdesigner.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 July 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@webexdesigner.com. Also on July 26, 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 August 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Cisco Technology, Inc. is a worldwide technology leader offering a broad range of information and communications products and services.
In 2007, Complainant acquired WebEx Communications, Inc., and has been using the WEBEX mark in connection with its business ever since.
Complainant has rights in the WEBEX mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <webexdesigner.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire WEBEX mark in the disputed domain name plus a generic or descriptive term “designer” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <webexdesigner.com> domain name because Respondent is not authorized to use Complainant’s mark in any way. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to trade upon the goodwill associated with Complainant and its mark, and to offer competing goods and services.
Respondent registered and uses the <webexdesigner.com> domain name in bad faith. Respondent attempts to commercially gain by directing users to Respondent’s webpage which promotes goods and services that compete with those offered by Complainant. Additionally, Respondent had actual knowledge of Complainant’s rights in the WEBEX mark prior to registration of the disputed domain name. Finally, Respondent failed to respond to a cease-and-desist letter. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WEBEX mark.
Complainant’s rights in the WEBEX existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the at-issue domain name to offer goods and services that compete with those of Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the WEBEX mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The <webexdesigner.com> domain name incorporates Complainant’s entire WEBEX mark followed by the descriptive term “designer” and the top level domain name “.com.” The resulting differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish the two for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <webexdesigner.com> domain name is confusingly similar to the Complainant’s WEBEX mark under Policy ¶4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”).
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 domain name.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Muhammad Imran” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the <webexdesigner.com> domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Respondent used the at-issue domain name to pass itself off as Complainant –webpages associated with the at-issue domain name prominently display the WEBEX mark– and to promote goods and services that compete with those offered by Complainant. Respondent’s use of the confusingly similar domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain name. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
In light of the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interest Respondent uses the at-issue domain name to pass itself off as Complainant so that it may promote services in competition with those offered by Complainant. Thereby, Respondent attempts to create confusion between the domain name and Complainant’s mark for commercial gain. Per Policy ¶ 4(b)(iv), Respondent’s use of the <webexdesigner.com> domain name to address webpages to attract internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content thereon for commercial gain shows Respondent’s bad faith registration and use of the <webexdesigner.com> domain name. Further, Respondent’s use of the domain name in this manner is disruptive to Complainant’s business indicating Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii).
Finally, Respondent had actual knowledge of Complainant’s rights in the WEBEX trademark before registering the <webexdesigner.com> domain name. Respondent’s prior knowledge is, without limitation, evident from the notoriety of Complainant’s WEBEX trademark and Respondent’s use of the Complainant’s WEBEX mark on webpages addressed by the <webexdesigner.com> domain, name as discussed above. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webexdesigner.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 21, 2018
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