Masterwork Electronics, Inc. v. Vu Dinh
Claim Number: FA2107001954190
Complainant is Masterwork Electronics, Inc. (“Complainant”), represented by Jennifer M Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Vu Dinh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mastersworkelectronics.com>, registered with Dynadot, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2021; the Forum received payment on July 7, 2021.
On July 22, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <mastersworkelectronics.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 July 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@mastersworkelectronics.com. Also on July 26, 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 August 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Masterwork Electronics, Inc., is a manufacturer of printed circuit board assemblies.
Complainant maintains registration of its MASTERWORK ELECTRONICS mark with the United States Patent and Trademark Office (“USPTO”).
The at-issue domain name, <mastersworkelectronics.com>, is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s MASTERWORK ELECTRONICS mark, misspelling it by adding an additional letter “s,” and simply adds a “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <mastersworkelectronics.com> domain name because Respondent is not commonly known by the <mastersworkelectronics.com> domain name nor has Respondent been authorized to use Complainant’s MASTERWORK ELECTRONICS mark. Additionally, Respondent is not using the <mastersworkelectronics.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the <mastersworkelectronics.com> domain name to pass itself off as Complainant by imitating Complainant’s website.
Respondent registered and uses the <mastersworkelectronics.com> domain name in bad faith because Respondent uses the <mastersworkelectronics.com> domain name to pass off as Complainant by mimicking Complainant’s website. Additionally, Respondent’s typosquatting activities are indicative of bad faith. Finally, Respondent acted with actual knowledge of Complainant’s rights in the MASTERWORK ELECTRONICS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in MASTERWORK ELECTRONICS.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MASTERWORK ELECTRONICS trademark.
Respondent uses the <mastersworkelectronics.com> domain name to pass itself off as Complainant by imitating Complainant’s website.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its MASTERWORK ELECTRONICS mark with the USPTO sufficiently demonstrates Complainant’s 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)).
Respondent’s <mastersworkelectronics.com>domain name incorporates Complainant’s MASTERWORK ELECTRONICS trademark less its space, inserts an “s” after the mark’s first term, then follows all with the generic top-level domain “.com.” Under the Policy, the resulting differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <mastersworkelectronics.com> domain name is confusingly similar to Complainant’s MASTERWORK ELECTRONICS trademark pursuant to Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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 WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Vu Dinh” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <mastersworkelectronics.com>domain name. The Panel therefore concludes that Respondent is not commonly known by the <mastersworkelectronics.com> domain name for the purposes of 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).
Furthermore, Respondent uses the <mastersworkelectronics.com> domain name to pass itself off as Complainant by mimicking Complainant’s genuine website. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the at-issue confusingly similar domain to pass itself off as Complainant by addressing a website that mimics Complainant’s genuine website. Respondent’s use of the domain name in such manner shows that Respondent registered and used the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”).
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces one or more typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark and/or will read the misspelled trademark laden domain name and confuse it with its target trademark. As all can see, the at-issue domain name contains Complainant’s MASTERWORK ELECTRONICS mark which Respondent misspells by inserting an extra “s” after the mark’s first term. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”).
Additionally, Respondent had actual knowledge of Complainant’s rights in MASTERWORK ELECTRONICS when it registered <mastersworkelectronics.com> as a domain name. Respondent’s preregistration knowledge of Complainant’s MASTERWORK ELECTRONICS trademark is evident from Respondent’s use of the domain name to address a copycat version of Complainant’s genuine website. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mastersworkelectronics.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 19, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page