Logitech Europe S.A. v. Serghei Isachi
Claim Number: FA2003001889632
Complainant is Logitech Europe S.A. (“Complainant”), represented by Christopher Dolan of Barnes & Thornburg LLP, Illinois, United States. Respondent is Serghei Isachi (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ps4astro.com>, registered with Registrar of Domain Names REG.RU 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 24, 2020; the Forum received payment on March 24, 2020.
On March 25, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <ps4astro.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 March 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@ps4astro.com. Also on March 26, 2020, 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 April 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in the English language.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Logitech Europe S.A., is a leading worldwide provider of personal peripherals and computer and mobile accessories for PC navigation, video communication and collaboration, music and smart home, and gaming. Complainant has rights in the ASTRO mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,933,259, registered Apr. 5, 2016). See Compl. Ex. D. Respondent’s <ps4astro.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the letters “ps4” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <ps4astro.com> domain name. Respondent is not permitted or licensed to use Complainant’s ASTRO mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <ps4astro.com> domain name to pass off as Complainant.
Respondent has registered and uses the <ps4astro.com> domain name in bad faith. Respondent is attempting to pass off as Complainant in order to attract Internet users to its website for commercial gain. Additionally, Respondent used a privacy service to conceal its identity. Moreover, Complainant sent a cease and desist letter to Respondent, to which Respondent failed to respond or comply. Finally, Respondent had actual knowledge or constructive notice of Complainant’s ASTRO mark prior to registering the <ps4astro.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Swiss company and a leading worldwide provider of personal peripherals and computer and mobile accessories for PC navigation, video communication and collaboration, music and smart home, and gaming.
2. Complainant has established its trademark rights in the ASTRO mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,933,259, registered Apr. 5, 2016).
3. Respondent registered the <ps4astro.com> domain name on September 20, 2019.
4. Respondent uses the <ps4astro.com> domain name to pass itself off as 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 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the ASTRO mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the ASTRO mark (e.g., Reg. No. 4,933,259, registered Apr. 5, 2016). See Compl. Ex. D. Therefore, the Panel fin that Complainant has rights in the ASTRO mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ASTRO mark. Complainant submits that Respondent’s <ps4astro.com> domain name is confusingly similar to Complainant’s ASTRO mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of letters and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Complainant argues Respondent merely adds the letters “ps4”, and a “.com” gTLD to Complainant’s ASTRO mark. The Panel agrees with Complainant and finds that the <ps4astro.com> domain name does not contain changes that would sufficiently distinguish it from the ASTRO mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ASTRO trademark and to use it in its domain name, adding the letters “ps4”which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <ps4astro.com> domain name on September 20, 2019;
(c) Respondent uses the <ps4astro.com> domain name to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <ps4astro.com> domain name as Respondent is not authorized to use Complainant’s ASTRO mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in 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 a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See Compl. Ex. B. As a result, the Panel notes that the WHOIS information of record identifies registrant as “Serghei Isachi,” and there is no other evidence to suggest Respondent was authorized to use the ASTRO mark. Id. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(f) Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims Respondent is using the <ps4astro.com> domain name to resolve to pass itself off as Complainant. Passing off behavior may not evince rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Here, Complainant argues that Respondent’s website prominently displays the ASTRO mark and images of Complainant’s ASTRO C40 gaming controller. In addition, Respondent’s website prominently displays photographs, images and design element copied directly from Complainant’s ASTRO website. See Compl. Exs. C&F. Thus, the Panel agrees with Complainant and finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims Respondent registered and uses the <ps4astro.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to attract, for commercial gain, users to the disputed domain name. Using a confusingly similar domain name to benefit commercially via passing off behavior can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). Here, Complainant contends that Respondent’s confusingly similar domain name is intended to mislead Internet users and divert Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims Respondent’s website creates a false impression by prominently displaying Complainant’s trademarks, copyrighted material, and other information so that Internet users will be confused into mistakenly believing Respondent’s website is affiliated with or hosted, sponsored, or authorized by Complainant, when it is not. Respondent’s website is intentionally designed to deceive Internet users. See Compl. Exs. C&F. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s ASTRO mark. The Panel notes that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances 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 Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that given Respondent’s prominent use of the ASTRO mark and Complainant’s copyrighted photos and graphics on Respondent’s website in what is a clear attempt to pass off Respondent’s website as Complainant’s ASTRO Website, it is evident that Respondent had actual knowledge of Complainant and Complainant’s ASTRO mark prior to registering and using the disputed domain name. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the ASTRO mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ASTRO mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ps4astro.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 22, 2020
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