NVIDIA Corporation v. Harold Etoile
Claim Number: FA1912001874606
Complainant is NVIDIA Corporation (“Complainant”), represented by James Taylor of NVIDIA Corporation, USA. Respondent is Harold Etoile (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geforce.us>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2019; the Forum received payment on December 11, 2019.
On December 12, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <geforce.us> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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@geforce.us. Also on December 17, 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 January 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 usTLD 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 usTLD Policy, usTLD 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, NVIDIA Corporation, is a multinational electronics and technology company based in the United States. Complainant has rights in the trademark GEFORCE through its use in commerce since 1999 and its registrations with the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office (“EUIPO”), and the national trademark offices of various other countries dating back to 2003. Respondent’s <geforce.us> domain name, registered on July 31, 2019, is identical to Complainant’s GEFORCE mark as it incorporates the mark in its entirety, merely adding the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <geforce.us> domain name. Respondent is not licensed or authorized to use Complainant’s GEFORCE mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that displays pay-per-click hyperlinks that reference various third-party websites, many of which relate directly to Complainant.
Respondent had actual knowledge of Complainant’s GEFORCE mark and it registered and uses the <geforce.us> domain name in bad faith. Respondent has registered the disputed domain name for the purpose of selling the disputed domain name for an amount in excess of its out-of-pocket costs. Respondent has engaged in a pattern of bad faith registration. Additionally, Respondent uses the disputed domain name attract Internet users to its website and commercially benefit via third-party pay-per-click links. Finally, Respondent ignored Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 asserts rights in the GEFORCE mark through registration of the mark with the USPTO, the EUIPO and other national trademark offices. Registration of a mark with such governmental trademark authorities is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides copies of some of its registrations for the GEFORCE mark. Therefore, the Panel finds that Complainant has rights in the GEFORCE mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <geforce.us> domain name is identical to Complainant’s GEFORCE mark as it incorporates the mark in its entirety, merely adding the “.us” ccTLD. The addition of a ccTLD most often fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wicked Weasel Pty Ltd v. Kulich / GS, FA 1604785 (Forum Apr. 23, 2015) (finding, “The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the disputed domain name is identical to the GEFORCE mark under 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). Should it succeed in that effort, the burden then shifts to Respondent to show that 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 contends that Respondent lacks rights or legitimate interests in the <geforce.us> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use Complainant’s marks. WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the <geforce.us> domain name lists the registrant as “Harold Etoile,” and no information on the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s GEFORCE mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <geforce.us> domain name is demonstrated by its failure to use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant contends that Respondent uses the disputed domain name’s resolving website to display pay-per-click hyperlinks that reference third-party websites, some of which are competitive with Complainant. Use of a domain name that is confusingly similar to a complainant’s mark to resolve to a pay-per-click website is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(ii) or (iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides screenshots of Respondent’s resolving website, which displays click-through links that reference Complainant and Complainant’s products. In the absence of any Response or other submission by Respondent, the Panel therefore finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant argues that Respondent registered the <geforce.us> domain name with actual knowledge of Complainant’s rights in the GEFORCE mark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); 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). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering the <geforce.us> domain name is apparent from the fame and notoriety of Complainant’s trademark and from Respondent’s use of the disputed domain name. In support, Complainant submits screenshots of its own website, its social media page, and a news article discussing its products. Therefore, the Panel finds it more likely than not that Respondent registered the <geforce.us> domain name with actual knowledge of Complainant’s GEFORCE mark.
Next, Complainant contends that Respondent’s bad faith registration and use is indicated by its offering of the <geforce.us> domain name for sale to the public at a very high price. A general offer for sale of a domain name for an amount in excess of a respondent’s documented out-of-pocket costs related to the domain name can demonstrate bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”) Complainant submits a screenshot from an auction site showing that Respondent is offering the disputed domain name to the public for $30,000 USD, an amount it asserts is in excess of Respondent’s out-of-pocket costs. Therefore, the Panel finds that such an offer indicates bad faith registration or use under Policy ¶ 4(b)(i).
Complainant further contends that Respondent’s registration of the <geforce.us> domain name is part of a pattern of bad faith registration and use of domain names. Registration of domain names that infringe on other famous marks can indicate a pattern of bad faith per Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides Whois records for a number of domain names that incorporate other famous marks such as amazonwebstore.us (“Amazon”), armanibeauty.net (“Armani”), flyemirates.us (“Fly Emirates”), and merckgroup.us (“Merck”). These records all list the identical email address to that listed for Respondent in the <geforce.us> domain name and so the Panel determines that the registration and use of the <geforce.us> domain name is part of a pattern and is further evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Finally, Complainant contends that Respondent’s bad faith is indicated by its use of the <geforce.us> domain name to link to third-party websites, many of which relate to Complainant or Complainant’s products. Use of a domain name to resolve to a page of pay-per-click links can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”) Complainant submits screenshots of the <geforce.us> domain name’s resolving website and the site displays pay-per-click hyperlinks which redirect the user to third-party websites, most related to Complainant and/or its field of business and a very small number that are unrelated. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the usTLD Policy Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geforce.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 9, 2020
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