Maxim Integrated Products, Inc. v. Heidi Hicks
Claim Number: FA1905001841909
Complainant is Maxim Integrated Products, Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, United States. Respondent is Heidi Hicks (“Respondent”), Oregon, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maximintegratedbiz.com>, registered with Google LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2019; the Forum received payment on May 6, 2019.
On May 7, 2019, Google LLC confirmed by e-mail to the Forum that the <maximintegratedbiz.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2019 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@maximintegratedbiz.com. Also on May 7, 2019, 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 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 is a Fortune 1000 company that designs, manufactures, and sells integrated circuits. Complainant has rights in the MAXIM mark through its registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,337,707, registered May 28, 1985) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA795349, registered Apr. 12, 2011). Furthermore, Complainant has common law rights in the MAXIM INTEGRATED mark through its exclusive and extensive use of the mark throughout the world. Respondent’s <maximintegratedbiz.com> is confusingly similar to Complainant’s MAXIM INTEGRATED mark as the disputed domain name contains the mark in its entirety and adds the generic word “biz” and the generic top-level domain (gTLD) “.com”.
Respondent has no rights or legitimate interests in the domain name. Respondent is not permitted or licensed to use Complainant’s MAXIM INTEGRATED mark and is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant in furtherance of fraudulent phishing schemes.
Respondent registered and used the domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name through a fraudulent email phishing scheme. Lastly, Respondent had actual and constructive knowledge of Complainant’s MAXIM INTEGRATED mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Maxim Integrated Products, Inc. (“Complainant”), of San Jose, California, USA. Complaint is the owner of domestic and international registrations for the mark MAXIM, which it has continuously used since at least as early as 1983, in connection with its provision of integrated circuits, semiconductor chips, and related products and services. Complainant operates a multinational enterprise under the brand Maxim Integrated, which it has used since its inception. Complainant operates in real space, and also in cyberspace, principally from its website found at <maximumintegrated.com> which is a domain name Complainant has owned for almost two decades. Complainant provided substantial sales and usage data, as well as prior UDRP findings to support the conclusion that Complainant is additionally well known by the common law mark MAXIM INTEGRATED.
Respondent is Heidi Hicks (“Respondent”), of Sisters, Oregon, USA. Respondent’s registrar’s address is listed as Mountain View, California, USA. The Panel notes that Respondent registered the <maximintegratedbiz.com> domain name on or about April 27, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the MAXIM mark through its registrations with the USPTO and CIPO. Registration of a mark with multiple trademark offices, including the USPTO and CIPO, is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Here, Complainant provided copies of it USPTO (e.g. Reg. No. 1,337,707, registered May 28, 1985) and CIPO (e.g., Reg. No. TMA795349, registered Apr. 12, 2011) registrations for the MAXIM mark. Complainant also provides a list of its foreign registrations. The Panel here finds that Complainant has rights in the MAXIM mark per Policy ¶ 4(a)(i).
Complainant further argues that it has common law rights in the MAXIM INTEGRATED mark through its exclusive and extensive use of the mark throughout the world. Panels have previously held that a complainant can show common law rights in a mark through continuous use of a mark, advertising expenditures, and other evidence showing it has acquired a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant has provided the Panel with evidence of long time continuous use, branding data, and internet traffic information pertaining to use of the MAXIM INTEGRATED mark in its <maximintegrated.com> domain name. The Panel here finds that Complainant has common law rights in the mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <maximintegratedbiz.com> domain name is confusingly similar to Complainant’s MAXIM INTEGRATED mark as the domain contains the fully-formed mark with the addition of the generic word “biz” and a “.com” gTLD. Such changes may be insufficient to differentiate the disputed domain name from the at-issue mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel here finds that Respondent’s addition of the term “biz” and the “.com” gTLD to Complainant’s MAXIM INTEGRATED mark does not mitigate any confusingly similarity per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <maximintegratedbiz.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s MAXIM INTEGRATED mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information identifies Respondent as “Heidi Hicks” and there is nothing in the record to suggest that Respondent is authorized to use the MAXIM INTEGRATED mark. The Panel here finds Respondent is not commonly known by the <maximintegratedbiz.com> domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not make a bona fide offering of goods or services through the <maximintegratedbiz.com> domain name. Instead, Respondent uses the domain name to pass off as Complainant through emails and engage in a phishing scheme. Use of an email address associated with the disputed domain name to pass off in furtherance of phishing is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 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 Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Here, Complainant has provided the Panel with emails designed to defraud members of the public into thinking that Respondent is Complainant by purportedly hiring them and taking personal information. The Panel here finds that Respondent does not make a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends that Respondent registered and used the domain name in bad faith by impersonating Complainant in order to perpetrate fraud through a phishing scheme. Use of a disputed domain name to pass off as a complainant through an email phishing scheme may constitute bad faith under Policy ¶¶ 4b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant has provided screenshots of email communication between Respondent and the general public where Respondent, representing itself as Complainant, seeks personal information. The Panel here finds that Respondent engaged in bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues Respondent had actual and constructive knowledge of Complainant’s rights in the MAXIM INTEGRATED mark at the time Respondent registered and subsequently used the <maximintegratedbiz.com> domain name thus indicating bad faith registration and use. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant further contends that Respondent’s use of the disputed domain name to pass off in furtherance of phishing demonstrates actual knowledge. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the MAXIM INTEGRATED mark per Policy ¶ (4)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <maximintegratedbiz.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 13, 2019
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