CommScope, Inc. of North Carolina v. Domain Administrator
Claim Number: FA2204001990945
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domain Administrator (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <systima.co>, registered with Sav.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2022; the Forum received payment on April 4, 2022.
On April 5, 2022, Sav.com, LLC confirmed by e-mail to the Forum that the <systima.co> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 April 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2022 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@systima.co. Also on April 6, 2022, 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 May 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SYSTIMAX trademark established by its ownership of the trademark registrations described below and extensive use of the mark by itself in its digital communications business since as early as 2004 when it acquired the brand and earlier use by its predecessor in interest.
Complainant next alleges that the disputed domain name is confusingly similar to its SYSTIMAX mark as consists of Complainant’s mark in its entirety, except for the deletion of the letter “x” in the disputed domain name. Complainant argues that the absence of the letter “x” in the disputed domain name does not serve to distinguish it from Complainant’s SYSTIMAX mark.
Complainant further submits that the country code Top Level Domain extension <.co> is also not a distinguishing feature. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Forum Nov. 4, 2002) (Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition is inconsequential under Policy ¶ 4(a)(i).)
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that that where, as in the present proceeding, Complaint, Respondent is not commonly known by the domain name; Respondent is not a licensee of Complainant; and Complainant’s prior rights in the SYSTIMAX mark precede Respondent’s registration of the disputed domain name; it may be presumed that Respondent does not have a legitimate interest in the disputed domain name. Citing Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Complainant adds that Respondent has no statutory or common law trademark rights or any other right or legitimate interest to Complainant’s SYSTIMAX mark or in the disputed domain name.
Referring to screen captures of the website to which the disputed domain name resolves, which have been exhibited in an annex to the Complaint, Complainant contends that the website to which the disputed domain name resolves not only contains links to third party websites, but Internet users visiting Respondent’s website are presented with a pop-up advertisement inviting visitors to enter their email address to be the first to know how to participate in an offer relating to a new crypto currency. Complainant submits that these screen captures show that Respondent has not and is not using the disputed domain name for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant further complains that the screen capture shows that Respondent’s website include a link to “Avaya” which is a company that owned the SYSTIMAX marks before Complainant acquired them.
Complainant argues that Respondent’s sole use of the disputed domain name is to divert Internet traffic to its website that displays commercial links to third parties which is neither a noncommercial nor a fair use. Veniece Newton v. Trevon Angulo (Forum Aug. 3, 2007) (holding that respondent’s use of Google AdSense for Domains to generate revenue by the use of advertising was not a legitimate noncommercial or fair use).
Complainant further contends that Respondent’s use of a misspelling of the trademark “SYSTIMAX” by removing the last letter misappropriates Complainant’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding Complainant and its products and services.
Complainant adds that Respondent is using the disputed domain name to capitalize on this consumer deception to commercially gain from the pay-per-click advertisements which does not constitute a noncommercial, fair, or bona fide use.
Complainant next argues that the disputed domain name was registered in bad faith because Respondent had actual knowledge of the SYSTIMAX marks prior to the registration of the disputed domain name. Complainant submits that the disputed domain name is a misspelling of Complainant’s mark and has only a single letter different from Complainant’s own <systimax.com> domain name which forwards to Complainant’s own website shows that Respondent knew of Complainant and its marks prior to registering the disputed domain name.
Complainant adds that Respondent’s website includes a link to “Avaya” which is a company that owned the SYSTIMAX trademark registrations before they were acquired by Complainant. Complainant adds that there is no company other than Complainant that has a name similar to disputed domain name that also related to the name Avaya. Furthermore, the disputed domain name is a single letter different from Complainant’s own <systimax.com> domain name which forwards to Complainant’s own website. Complainant contends that these factors also show that Respondent was aware of the SYSTIMAX mark when the disputed domain name was registered.
Complainant argues that there would be no reason to register the disputed domain name unless the Respondent knew of Complainant, and its SYSTIMAX brand wireless products,
Complainant contends that by selecting a domain name which is nearly identical to the protected SYSTIMAX mark, Respondent sought to commercially benefit from the goodwill associated with the SYSTIMAX mark by creating a likelihood of confusion as to the source of Respondent’s website. Moreover, consumers who erroneously encounter the disputed domain name are likely to click on the links believing that they are related to Complainant’s offerings and the offerings of its predecessor company, and in doing so, consumers generate commercial gains for Respondent.
Complainant argues that accordingly, Respondent’s acts of deception and misdirection of Internet traffic to create a commercial gain demonstrate Respondent’s use of the disputed domain name in bad faith.
Additionally, Complainant argues that Respondent’s use of pop-up advertising to trick consumers into entering their information into a crypto exchange shows the intent in registering the disputed domain name was to divert traffic, not for a legitimate purpose.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides goods and services for digital communications, using the SYSTIMAX mark for which it owns the following portfolio of trademark registrations: [IMAGE OMITTED].
Complainant has also filed on December 29, 2021, United States trademark application number 90519816 for the SYSTIMAX mark for use on goods in international class 9.
Complainant has an established Internet presence and maintains a website promoting its products and services at <https://www.commscope.com>.
The disputed domain name was registered on March 29, 2022, and resolves to a basic webpage with what appears to be links to third party websites. Additionally visitors to Respondent’s website are met with a pop-up advertisement inviting them to provide their email addresses to receive information about the launch of a new crypto-currency.
There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the details of the registration of the disputed domain name in the course this proceeding.
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”).
Complainant has provided convincing evidence that it has rights in the SYSTIMAX mark, established by its ownership of the trademark registrations described above and long use of the mark by itself and its predecessors in title.
The disputed domain name <systima.co> consists of Complainant’s mark in its entirety omitting the letter “x” and the country code Top Level Domain “(ccTLD”) extension <.co>.
Complainant’s SYSTIMAX mark is clearly recognizable within the disputed domain name. The omission of the letter “x”, situated as it is, as the last letter in the SYSTIMAX mark, does not on the balance of probabilities either add any distinguishing character to the disputed domain name or reduce the confusingly similar character of the disputed domain name.
Neither does the ccTLD extension <.co> add any distinguishing character. It would be considered by Internet users as a necessary technical requirement for a domain name or perhaps an abbreviation of the word “company” or “corporation”.
This Panel finds therefore that the disputed domain name is confusingly similar to the SYSTIMAX mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Respondent is not a licensee of Complainant;
· Complainant’s prior rights in the disputed domain name precede Respondent’s registration of the disputed domain name;
· Respondent has no statutory or common law trademark rights or any other right or legitimate interest to Complainant’s SYSTIMAX mark or in the disputed domain name;
· the screen captures of the website to which the disputed domain name resolves, which have been exhibited in an annex to the Complaint, show that the disputed domain name resolves to a website that not only contains links to third party websites, but Internet users visiting Respondent’s website are presented with a pop-up advertisement inviting them to enter their email address to be the first to know how to participate in an offer relating to a new crypto currency;
· Respondent’s website include a link to “Avaya” which is a company that owned the SYSTIMAX trade mark registrations before Complainant acquired them showing that Respondent is aware of Complainant and its trademark rights;
· Respondent’s sole use of the disputed domain name is to divert Internet traffic to its website that displays commercial links to third parties which is neither a noncommercial nor a fair use;
· Respondent’s use of the disputed domain name is to capitalize on this consumer deception to commercially gain from the pay-per-click advertisements and is not a noncommercial, fair, or bona fide use of the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
SYSTIMAX is a distinctive mark and the disputed domain name is almost identical to it except for the omission of the letter “x”. Not only did Complainant’s trademark rights in the SYSTIMAX mark predate the registration of the disputed domain name, but Complainant owns and uses an almost identical domain name <systimax.com> as the address of its main website. It is most improbable therefore that the registrant of the disputed domain name was unaware of Complainant’s mark when the disputed domain name was chosen and registered.
In the absence of any explanation as to how the disputed domain name was chosen and registered, on the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s SYSTIMAX mark and the goodwill and reputation established by Complainant and its predecessors in title by their use of the mark.
The uncontested evidence, in the form of screen captures exhibited by Complainant, shows that on the balance of probabilities Respondent is using the disputed domain name as the address of a website that appears to have pay-per-click links to third party websites.
The screen capture shows that Respondent’s website has no content except for what appear to be three links to “Remote Workforce Software”, “Avaya”, which Complainant submits is the name of its predecessor in title, and “Schoolofrock”.
This Panel would be concerned that it is possible that these links may not be presented to all Internet users. Different links may be generated by users accessing Respondent’s website on different devices. So it is possible that this link was generated in some way in response to the device used by Complainant and may not necessarily be generated by other devices.
Nonetheless it is clear from the other screen capture exhibited by Complainant that visitors to Respondent’s website are also met with a pop-up advertisement offering them information about a new crypto currency if they provide their email addresses.
This is very concerning because Internet users are attracted by the website address that is almost identical to Complainant’s mark in circumstances where Respondent has no rights or legitimate interests in the disputed domain name and where the disputed domain name is being used only to provide links to third parties, not associated with Complainant and possibly not associated with Respondent either.
Upon arrival at Respondent’s website, the misdirected Internet users are then invited to provide Respondent with their email addresses to receive information about a new cryto currency. At the point in time when the diverted Internet users are presented with this pop-up offer, it appears that the Internet visitors have not yet reached Respondent’s very basic website and may well believe that the offer is presented by Complainant, which it is not. It is also significant that the Internet users are invited to submit their request by choosing to “Continue to systima.co”. This shows that Respondent would be the recipient of the information.
This Panel finds therefore that Respondent is using the disputed domain name in bad faith because by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with 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.
This finding is supported by the fact that Responded availed of a privacy service to conceal his or her identity on the published WhoIs, and in fact did not provide any name when registering the disputed domain name but instead gave his or her name as “Domain Administrator” and Respondent has not responded to the Complaint.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <systima.co> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 4, 2022
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