Arris Enterprises LLC v. Arisit Solutions
Claim Number: FA2106001951254
Complainant is Arris Enterprises LLC (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Arisit Solutions (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arrisitsolutions.com>, registered with OwnRegistrar, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2021; the Forum received payment on June 16, 2021.
On June 17, 2021, OwnRegistrar, Inc. confirmed by e-mail to the Forum that the <arrisitsolutions.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 June 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2021 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@arrisitsolutions.com. Also on June 17, 2021, 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 July 12, 2021, 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 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 sells a variety of communications and data processing products and services including cable modems. Complainant has rights in the trademark ARRIS through its use in commerce since 2003 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the European Intellectual Property Office (“EUIPO”), and the United Kingdom Intellectual Property Office (“UKIPO”). Respondent’s <arrisitsolutions.com> domain name, registered on June 9, 2021, is confusingly similar to Complainant’s ARRIS mark. Respondent incorporates the mark in its entirety and adds the phrase “IT Solutions” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <arrisitsolutions.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the ARRIS mark in any way. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant and trick consumers through a phishing scheme designed to obtain personal information.
Respondent registered and used the <arrisitsolutions.com> domain name in bad faith as Respondent has engaged in a pattern of bad faith conduct; it seeks to disrupt Complainant’s business; and it also seeks commercial gain by creating consumer confusion that Respondent is somehow related to Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the ARRIS mark due to the longstanding use of the mark and Respondent’s use of the mark and its associated logo in furtherance of a phishing scheme.
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.
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 and evidence 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 and supported 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 to have rights in the ARRIS mark due to its registration of the mark with the USPTO, the EUIPO, and the UKIPO. Registration of a mark with such national or regional trademark offices is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) (“It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights”). Here, Complainant provides the Panel with screenshots from the above-mentioned trademark authorities displaying its registration particulars for the ARRIS mark. Therefore, the Panel finds that Complainant has established rights in the mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <arrisitsolutions.com> domain name is confusingly similar to Complainant’s ARRIS mark. Registration of a domain name that contains a mark in its entirety and adds a generic term or phrase along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); See also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Respondent incorporates the ARRIS mark in its entirety and adds the phrase “IT Solutions” along with the “.com” gTLD. In light of the mark occupying the left-most position in the domain name and it being a rather distinctive and well-known mark within Complainant’s industry, the Panel finds that the added generic terms do not reduce the confusing similarity of the domain name in appearance, sound, or meaning. Thus, Respondent’s domain name is confusingly similar to Complainant’s mark per 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 this 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 argues that Respondent lacks rights or legitimate interest in the <arrisitsolutions.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given any license or consent to use the ARRIS mark or register domain names using Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that 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 Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Arisit Solutions” and Complainant notes that this appears to include a misspelling of the word “Arris”. Complainant has also submitted a screenshot from the Dun & Bradstreet website indicating that the real Arris Solutions UK Ltd. entity has an address different from that listed for Respondent. No corporate profile exists with Respondent’s listed name or address. Further, there is no evidence to suggest that Respondent was authorized to use the ARRIS mark or was commonly known by the disputed domain name and it has not filed a Response or made any other submission in this case to refute Complainant’s claims. Therefore, the Panel finds insufficient evidence upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the disputed domain name to trick consumers into a phishing scheme. Use of a disputed domain name to obtain personal information through a phishing scheme is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA 1580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where he was using the disputed domain name to phish for Internet users’ personal information by offering a fake job posting on the resolving website). Here, Complainant provides the Panel with screenshots of various pages and iterations of Respondent’s <arrisitsolutions.com> website showing that Respondent claims to offer computer parts, data processing devices, and related services similar to those offered by Complainant. The site contains a “Contact Us” form, a copy of Complainant’s ARRIS arrow logo just below the statement “ARRIS MARKETPLACE launch soon!”, and a document titled “White Paper” below which the ARRIS arrow logo appears again followed by an opening statement “the first e-commerce Crypto empowered market. Shop spare parts and full IT parts with 60% discount when you use $ARR”. The remainder of the White Paper appears to relate to encouraging users to invest in a crypto token named ARRIS. Finally, the page contains a QR code which users are encouraged to scan in order “to be eligible to receive presale tokens”. From this evidence the purpose of Respondent’s website appears to be encouraging users to engage in some combination of obtaining computer hardware and investing in a crypto token by sending personal and financial information to Respondent. While phishing activity is not immediately apparent, the multiple uses of Complainant’s ARRIS logo on Respondent’s page tips the balance of probabilities over into Complainant’s favor and the Panel finds that it has made out at least a prima facie case that Respondent is not using the ARRIS mark in any proper manner. Since Respondent has not participated in these proceedings, it does not rebut this case. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶ 4(c)(i) or (iii).
The Complaint states that Respondent had actual knowledge of Complainant’s rights in the ARRIS mark at the time it registered the <arrisitsolutions.com> domain name. Actual knowledge of a complainant's rights in the asserted mark prior to registering a disputed domain name can serve as a solid foundation upon which to build case for bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to the fact that Respondent impersonates Complainant to further a fraudulent scheme. As Complainant’s ARRIS mark and its arrow logo appear several times on Respondent’s website, the Panel concludes that Respondent did, in fact, have actual knowledge of Complainant’s right in its mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent registered and used the <arrisitsolutions.com> domain name in bad faith based on three of the examples set out in Policy ¶ 4(b). First, it claims that “Respondent engaged in a pattern of conduct by registering the Domain Name and building a series of websites that would draw consumers to the website with the intent to deceive those consumers…” This apparently refers to the fact that Respondent launched a modified version of the <arrisitsolutions.com> website after its hosting company suspended the original version in response to Complainant’s takedown notice. According to the treatise Domain Name Arbitration (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) at par. 6.03-A, “[t]he term ‘pattern of conduct’ has been construed to mean targeting trademarks of many owners as well as multiple trademarks of one owner. It applies to respondents currently infringing a single owner’s rights with multiple registrations at one time or having a history of multiple registrations involving a diversity of trademarks over a period of time.” The Panel is unable to find any decision or other discussion that addresses the present question of whether publishing multiple versions of a website at a single disputed domain name fits within the Policy ¶ 4(b)(ii) definition of a “pattern of conduct”. As bad faith has been found on other grounds, the Panel sees no reason to engage in further analysis or possible expansion of Policy interpretation in the present case.
Next, Complainant asserts that the disputed domain name is “disrupting Arris’s business” and thus, that “Respondent has also acted in bad faith pursuant to Policy ¶ 4(b)(iii).” This sub-section requires that Respondent have “registered the domain name primarily for the purpose of disrupting the business of a competitor.” There has been some debate concerning the proper interpretation of the term “competitor”. See Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (the Panel preferred a restrictive view, and held that a respondent can disrupt the business of a "competitor" only if it offers goods or services that can compete with or rivals the goods or services offered by the trademark owner.). However, even under a narrow interpretation of “competitor” it appears that Respondent and Complainant fit the definition as they both offer electronic devices and services related to computers, data processing, and communication. By using the ARRIS trademark and arrow logo in an effort to engage users in the purchase of computer equipment or perhaps crypto tokens, Respondent has disrupted Complainant’s business though its use of the disputed domain name and this constitutes bad faith under Policy ¶ 4(b)(iii).
Finally, Complainant argues that Respondent creates consumer confusion that Respondent is somehow related to Complainant and uses this to further a phishing scheme for commercial gain. Registration of a domain name in hopes of profiting from consumer confusion can be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain), see also Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Similarly, use of a disputed domain name to operate a phishing scheme or other nefarious activity based on confusion with an asserted mark is evidence of bad faith. See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”) Here, Complainant provides the Panel with multiple screenshots of Respondent’s original and revised <arrisitsolutions.com> website that shows Respondent offering products and services under the ARRIS mark and Complainant’s own arrow logo version thereof. As noted above, there is a contact form and a QR code by which users are invited to provide certain information to purchase computer and other electronic data processing equipment and some form of crypto token. Respondent has not participated in this case to explain its actions. Therefore, the Panel finds, by a preponderance of the evidence before it, that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arrisitsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 15, 2021
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