Arris Enterprises LLC v. Ontiu Nicolae
Claim Number: FA2109001963871
Complainant is Arris Enterprises LLC (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Ontiu Nicolae (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ruckuswireless.com.ro>, registered with Claus Web SRL.
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 September 15, 2021; the Forum received payment on September 15, 2021. The Complaint was received in English.
On September 23, 2021, Claus Web SRL confirmed by e-mail to the Forum that the <ruckuswireless.com.ro> domain name is registered with Claus Web SRL and that Respondent is the current registrant of the name. Claus Web SRL has verified that Respondent is bound by the Claus Web SRL 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 September 24, 2021, the Forum served the English language Complaint and all Annexes, including a Romanian and English language Written Notice of the Complaint, setting a deadline of October 14, 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@ruckuswireless.com.ro. Also on September 24, 2021, the Romanian and English language 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 October 18, 2021, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement for the disputed domain name is written in Romanian, thereby making the language of the proceeding Romanian. However, the Panel has a discretion in all the circumstances to direct that the language of the proceeding should be a different language from that of the registration agreement.
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant contends that since the <ruckuswireless.com.ro> domain name has no meaning in any language other than English and Respondent’s website under the domain name is in English, Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the Romanian language and would require delay and unnecessary costs to translate the documents.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering all of the circumstance, the Panel decides that the proceeding should be in the English language and the matter may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Arris Enterprises LLC, is a telecommunication equipment company. Complainant acquired Ruckus Networks (formerly known as Ruckus Wireless) in 2017. See Compl. Ex. 2A. Complainant has rights in the RUCKUS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,408,483, registered Sep. 24, 2013). See Compl. Ex. 1A. Respondent’s <ruckuswireless.com.ro> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only the term “wireless” and the “.com” generic top-level domain (“gTLD”) and “.ro” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <ruckuswireless.com.ro> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or permitted Respondent to use the RUCKUS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the domain name to trick Complainant’s customers in a phishing scheme.
Respondent registered and uses the <ruckuswireless.com.ro> domain name in bad faith because Respondent passes off as Complainant on the resolving website by using Complainant’s RUCKUS logo and product images, thereby diverting traffic. In addition, Respondent commercially benefits by phishing for customers’ personal information. Moreover, Respondent had actual knowledge of Complainant’s rights in the RUCKUS mark based on Respondent’s efforts to pass off as Complainant, including using photos of Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States telecommunication equipment company.
2. Complainant has established its trademark rights in the RUCKUS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,408,483, registered Sep. 24, 2013).
3. Respondent registered the <ruckuswireless.com.ro> domain name on August 8, 2016.
4. Respondent has used the domain name to trick Complainant’s customers in a phishing scheme.
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 claims rights in the RUCKUS mark through its registration with the USPTO (e.g., No. 4,408,483, registered Sep. 24, 2013). See Compl. Ex. 1A. Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RUCKUS mark. Complainant argues that Respondent’s <ruckuswireless.com.ro> domain name is confusingly similar to Complainant’s RUCKUS mark because it incorporates Complainant’s mark in its entirety, adding only the term “wireless” and the ccTLD/gTLD “.com.ro.” Under Policy ¶ 4(a)(i), adding a generic and/or descriptive term and a gTLD/ccTLD to the complainant’s mark renders the domain name confusingly similar to the mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under 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”).
(a) Respondent has chosen to take Complainant’s RUCKUS trademark and to use it in its domain name, adding only the term “wireless”;
(b) Respondent registered the <ruckuswireless.com.ro> domain name on August 8, 2016;
(c) Respondent has used the domain name to trick Complainant’s customers in a phishing scheme;
(d) Respondent has engaged in that activity without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <ruckuswireless.com.ro> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or permitted Respondent to use the RUCKUS mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information identifies “Ontiu Nicolae” as the registrant of the domain name. See Registrar Verification Email. Additionally, Complainant submits that it has not licensed or permitted Respondent to use the RUCKUS mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the domain name to trick consumers in a phishing scheme. Use of a disputed domain name for the purpose of collecting Internet users’ personal information (phishing) does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see additionally Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Complainant provides screenshots of Respondent’s website, showing that the website has a prominent “Contact us” section for customers to provide information to Respondent, thinking that the information will go to Complainant. See Compl. Ex. 8. However, Complainant submits that such use is a ploy to trick unsuspecting customers into submitting personal information. Moreover, since the products at issue are routers, they have login details that if provided would give Respondent access to customer networks. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 argues that Respondent registered and uses the <ruckuswireless.com.ro> domain name in bad faith because Respondent diverts Internet traffic and likely engages in phishing by passing itself off as Complainant on the resolving website for the disputed domain name. Using a disputed domain name to pass off as a complainant and phish for customers’ information is evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). The Panel notes that Complainant provides a screenshot of Respondent’s website, which features Complainant’s RUCKUS logo and products related to Complainant’s business. See Compl. Ex. 8. Complainant also contends that Respondent’s “Contact us” section is used to gather information from Complainant’s customers, which use led to Respondent’s website being suspended. See Compl. Exs. 8 & 9. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complaint argues that Respondent registered the <ruckuswireless.com.ro> domain name with actual knowledge of Complainant’s rights in the RUCKUS mark based on Respondent’s effort to pass itself off as Complainant, including using photos of Complainant’s products. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the respondent’s effort to pass off as the complainant. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant has provided screenshots of Respondent’s website under the disputed domain name, showing that Respondent offers WiFi products and assess points, similar to Complainant’s products via Ruckus, and even displays a photo of one of Complainant’s products. See Compl. Exs. 8 & 9. Therefore, as the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the RUCKUS mark, it finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
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 <ruckuswireless.com.ro> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 19, 2021
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