CommScope, Inc. of North Carolina v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2208002008927
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscopejobs.org>, registered with GoDaddy.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2022; the Forum received payment on August 18, 2022.
On August 19, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <commscopejobs.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 August 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@commscopejobs.org. Also on August 22, 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 September 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, CommScope, Inc. of North Carolina, provides a variety of communications products and services. Complainant has rights in the COMMSCOPE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 1,865,198, registered Nov. 29,1994).
2. The <commscopejobs.org>[i] domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the word “jobs” and the “.org” generic top level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <commscopejobs.org> domain because Respondent is not commonly known by the domain name and is not authorized to use Complainant’s COMMSCOPE mark.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain resolves to a parked webpage.
5. Respondent has registered and uses the <commscopejobs.org> domain name in bad faith because Respondent uses the domain name to disrupt Complainant’s business and to create bad faith attraction for commercial gain.
6. In addition, Respondent has a history of bad faith registrations.
7. Finally, Respondent had actual knowledge of Complainant’s rights in the COMMSCOPE mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COMMSCOPE mark. Respondent’s domain name is confusingly similar to Complainant’s COMMSCOPE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <commscopejobs.org> domain name and that Respondent registered and uses the domain name 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 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 asserts rights in the COMMSCOPE mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO for the COMMSCOPE mark (e.g., 1,865,198, registered Nov. 29,1994). Therefore, Complainant has rights in the COMMSCOPE mark under Policy ¶ 4(a)(i).
Complainant argues that the <commscopejobs.org> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic word “jobs” and the “.org” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a domain name under Policy ¶ 4(a)(i). See sleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Further, adding a generic word does not create a sufficient distinction. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Respondent has made the changes identified above and these changes do not create a sufficient distinction between the <commscopejobs.org> domain name and Complainant’s mark. Therefore, Respondent’s <commscopejobs.org> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <commscopejobs.org> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent does not have rights or legitimate interests in the <commscopejobs.org> domain name because Respondent is not commonly known by the domain name and is not associated with Complainant or authorized to use Complainant’s COMMSCOPE mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy 4 ¶ (c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. 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, there is no evidence available in the WHOIS information to suggest that Respondent is known by <commscopejobs.org> and no information suggests Complainant authorized Respondent to use the COMMSCOPE mark. Rather, the Registrar lists the registrant of the domain as “Carolina Rodrigues/Fundacion Comercio Electronico.” Therefore, the Panel holds that Respondent is not commonly known by the <commscopejobs.org> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <commscopejobs.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), no bona fide offering of goods or services, nor any legitimate noncommercial or fair use may be found where a domain name incorporating the mark of another resolves to a parked page, hosting a variety of third-party hyperlinks. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, the resolving webpage hosts links which advertise third-party goods and services, and Respondent presumably benefits financially from doing so. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered the <commscopejobs.org> domain in bad faith because it has a history of bad faith registrations. A history of registering domain names incorporating third-party trademarks can be evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). See Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). The record supports Complainant’s contention that Respondent has a history of registering and using domain names which infringe on third-party trademarks. Therefore, the Panel finds bad faith per policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent has registered and uses the <commscopejobs.org> domain in bad faith because it registered and uses the domain to disrupt Complainant’s business and to create bad faith attraction for commercial gain. Registration and use of a domain name which is confusingly similar to a complainant’s mark, and using that domain name to host parked, pay-per-click links is evidence of bad faith per Policy ¶ 4(b)(iii) and b(iv). See 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)); see also Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). The parked pay-per-click links on the <commscopejobs.org> domain name’s resolving website is evidence that Respondent is attempting to lure confused consumers away from Complainant’s domain to its own for commercial gain. Therefore, the Panel holds that Respondent has registered and uses the <commscopejobs.org> domain in bad faith under Policy ¶ 4(b)(iii) and b(iv).
The Panel finds Complainant has satisfied 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 <commscopejobs.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 27, 2022
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