Ubiquiti Inc. v. Kevin Nemeth / Lex Holdings Group LLC
Claim Number: FA2103001935564
Complainant is Ubiquiti Inc. ("Complainant"), represented by Kelley S. Gordon of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Kevin Nemeth / Lex Holdings Group LLC ("Respondent"), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubiquti.net>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2021; the Forum received payment on March 5, 2021.
On March 6, 2021, NameCheap, Inc. confirmed by email to the Forum that the <ubiquti.net> 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 March 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on March 12, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant is a New York-based technology company that manufactures and sells wireless and wired products for network infrastructures, with annual revenues of over $1 billion. Complainant has used the UBIQUITI mark in connection with such products since at least as early as 2001 and owns multiple United States trademark registrations for UBIQUITI in standard character form.
Respondent registered the disputed domain name <ubiquti.net> via a privacy registration service in February 2021. The domain name is being used for a website that purports to offer a variety of Complainant's wireless access point products at deeply discounted prices. The website includes links to pages on Complainant's own website. Complainant asserts that the products offered on Respondent's website are counterfeit versions of Complainant's products, and alleges that Respondent is attempting to pass off its products (assuming that they actually exist) as those of Complainant. Complainant states that no business relationship exists between the parties, that Respondent has never had permission to use Complainant's mark or sell its services, and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <ubiquti.net> is confusingly similar to its UBIQUITI mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <ubiquti.net> corresponds to Complainant's registered UBIQUITI trademark, omitting a letter "I" and appending the ".net" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Airbnb, Inc. v. Yang Qijin / Yangqijin, FA 1870652 (Forum Dec. 13, 2019) (finding <arbnb.com> confusingly similar to AIRBNB); Vanguard Trademark Holdings USA LLC v. Taranga Services Pty Ltd c/o Domain Admin, FA 1332160 (Forum July 29, 2010) (finding <natonalcarrental.com> confusingly similar to NATIONAL CAR RENTAL). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its only apparent use has been for a misleading website that promotes what are alleged by Complainant to be counterfeit versions of its products (an allegation that has not been challenged by Respondent). Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Birkenstock Sales GmbH v. Li Teng, FA 1906246 (Forum Aug. 24, 2020) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name that corresponds to a typographical variation on Complainant's mark, and is using the domain name for a website promoting what are alleged to be counterfeit versions of Complainant's products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Brooks Sports, Inc. v. Marco Holzman, FA 1930194 (Forum Feb. 26, 2021) (finding bad faith in similar circumstances); Garmin Switzerland GmbH v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd, FA 1747199 (Forum Oct. 4, 2017) (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubiquti.net> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 7, 2021
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