CommScope, Inc. of North Carolina v. Minh Vu
Claim Number: FA2211002018490
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota. Respondent is Minh Vu (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscopedatabase.com>, registered with Google 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 Forum electronically on November 1, 2022; Forum received payment on November 1, 2022.
On November 1, 2022, Google LLC confirmed by e-mail to Forum that the <commscopedatabase.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 November 2, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@commscopedatabase.com. Also on November 2, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 COMMSCOPE mark established by its ownership of the United States trademark and service mark registrations described below and submits that has it extensively used and advertised the distinctive COMMSCOPE brand in association with a wide range of products and services such as wireless networks, data centers, and intelligent buildings since 1969. In support of this assertion Complainant has adduced screen captures from its own website, Twitter and Facebook accounts.
Complainant alleges that the disputed domain name <commscopedatabase.com> is confusingly similar to the COMMSCOPE mark, arguing that the disputed domain name contains the mark in its entirety, that the element “database” does not serve to distinguish the disputed domain name from the mark. and neither is the generic Top-Level Domain (“gTLD”) extension <.com> a distinguishing feature. See Isleworth 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.”).
Complainant next alleges that Complainant has no rights or legitimate interests in the disputed domain name, arguing that there is no evidence that Respondent is commonly known by the mark or the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case D2000-0020 (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).
Complainant also asserts that Respondent is not a licensee of Complainant, and that Complainant’s prior rights in the COMMSCOPE mark precede Respondent’s registration.
Referring to a screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, Complainant submits that Respondent does not have a bona fide interest in the disputed domain name because there is no content on the website other than a login page.
Complainant adds that there is no evidence Respondent ever posted content on the site, other than the login, since the disputed domain name was registered. It is contended that such inactive use of the disputed domain name shows a lack of bona fide offering of goods or services and a lack of legitimate use.
Complainant further submits that Respondent designed the website to perpetrate a phishing scheme, arguing that to the extent that the login screen on the website to which the disputed domain name resolves shows any use whatsoever, it is not a legitimate use because the intent in registering the disputed domain name was to use it to engage in phishing activities to gather information from Complainant’s potential and current customers.
Complainant concludes by submitting that it is incumbent upon Respondent to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of Respondent.
Complainant finally alleges that the disputed domain name was registered and is being used in bad faith.
In this regard, Complainant argues that unlike the registration of a common name that may have more than one meaning, the COMMSCOPE mark is a coined term that only relates to Complainant and therefore the disputed domain name was registered with actual knowledge of Complainant’s rights. See Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., WIPO Case D2000-1221 (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).
Arguing that the disputed domain name is being used I bad faith, Complainant adds that Respondent’s failure to make active use of the disputed domain name shows bad faith. DCI S.A. v. Link Commercial Corp., WIPO Case D2000-1232 (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant further contends that Respondent’s diversion of traffic away from Complainant’s own website also shows bad faith pursuant to Policy ¶ 4(b)(iii).
Previous panels have defined “competitor” under Policy ¶ 4(b)(iii) as an entity who acts as a rival or opponent. See Mission KwaSizabantu v. Rost, WIPO Case D2000-0279 (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).
Complainant additionally submits that bad faith use can be inferred from Respondent’s choosing to use a designation that it knows to be similar to Complainant’s trademark in order to attract consumers to its website and trade on Complainant’s goodwill. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Furthermore, Complainant submits that Respondent does not make active use of the disputed domain name other than the login screen and such non-use constitutes passive holding and use in bad faith for the purposes of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides goods and services for wireless networks, data centers, and intelligent buildings and is the owner and user of the following United States registered marks:
· United States registered trademark COMMSCOPE, registration number 1,865,198, registered on the Principal Register on November 29, 1994, for goods in international class 9;
· United States registered service mark COMMSCOPE ADVANTAGE INVENTORY MANAGEMENT, registration number 3,008,397 registered on the Principal Register on October 25, 2005, for services in international class 35;
· United States registered trademark COMMSCOPE registration number 4,194,933, registered on the Principal Register on August 21, 2012, for goods in international class 6;
· United States registered trademark COMMSCOPE registration number 5,444,784 registered on the Principal Register on April 10, 2018 for goods in international class 6;
· United States registered trademark COMMSCOPE, registration number 4,463,018, registered on the Principal Register on January 7, 2014 for goods in international class 6.
Complainant has an established Internet presence. It maintains its principal website at <www.commscope.com> and has Twitter and Facebook accounts.
The disputed domain name <commscopedatabase.com> was registered on or about October 27, 2022 and resolves to a simple web page with the words “Ownership List”, “CommScope Database” and “Inventory Tracking Syst (sic”)” an a login field for the user to “sign in”.
There is no information available relating to Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for the registration details for the disputed domain name. The Registrar has confirmed that Respondent is the registrant of the disputed domain name.
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, uncontested evidence that it has rights in the COMMSCOPE mark, established by the ownership of the portfolio of trademark registrations described above and its use of the mark to distinguish its products and services in its business providing support for wireless, broadband and other applications.
The disputed domain name <commscopedatabase.com> consists of Complainants COMMSCOPE mark in its entirety in combination with the word “database” and the gTLD extension <.com>.
Complainant’s COMMSCOPE mark is the initial, dominant and only distinctive element in the disputed domain name. The word “database” is a commonplace dictionary word with no distinguishing character or meaning in the context of the disputed domain name.
In the circumstances of this proceeding, the presence of the word “database” within the disputed domain name does not prevent a finding that the disputed domain name is confusingly similar to Complainant’s mark neither does the gTLD <.com>. extension which would be considered by Internet users to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the COMMSCOPE 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
· there is no evidence that Respondent is commonly known by the mark or the disputed domain name;
· Respondent is not a licensee of Complainant;
· Complainant’s prior rights in the disputed domain name precede Respondent’s registration;
· the exhibited screen capture of the website to which the disputed domain name resolves, shows that there is no content on the website other than a login page;
· there is no evidence Respondent ever listed content on the site since the disputed domain name was registered other than the login page;
· such inactive use of the disputed domain name shows a lack of bona fide offering of goods or services and a lack of legitimate use;
· Respondent designed the website to which the disputed domain name resolves to perpetuate a phishing scheme and to the extent that the login screen on the website to which it resolves shows any use, it is was to engage in phishing activities to gather information from Complainant’s potential and current customers;
· it is incumbent upon respondents to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of Respondent.
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).
The evidence adduced shows that the disputed domain name, which is composed solely of Complainant’s mark and two non-distinctive elements, was registered without Complainant’s license or permission on October 27, 2022, long after Complainant acquired its rights, goodwill and reputation in the COMMSCOPE mark.
Complainant’s assertion that Respondent uses Complainant’s logo as part of the favicon on the browser, thereby demonstrating actual knowledge of Complainant, is not supported by evidence in the exhibits adduced with the Complaint, however this Panel is satisfied that on the balance of probabilities the registrant of the disputed domain name had actual knowledge of Complainant.
COMMSCOPE is a coined word and is the dominant and only distinctive element in the disputed domain name; Complainant has a substantial pre-existing reputation and goodwill in the COMMSCOPE mark; Complainant had, and continues to have, an established Internet presence, maintaining its own website at <www.commscope.com> and has adduced evidence that it also has a social media presence on Twitter and Facebook. it is improbable therefore that the registrant of the disputed domain name was unaware of Complainant, its name, COMMSCOPE mark and reputation when the disputed domain name was chosen and registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind, intending to take predatory advantage of Complainant, its goodwill and reputation in the COMMSCOPE mark.
The uncontested evidence adduced by Complainant shows that the disputed domain name resolves to a simple login page. Complainant has not adduced any evidence of what happens when a user attempts to login to the website. However, Complainant has alleged that Respondent is using the login page to entice Internet users to disclose personal data for the purposes of phishing. While this is of course possible, it is a very serious allegation which remains a bare assertion unsupported by evidence. This Panel must find that the allegation is not proven.
Additionally, Complainant’s submissions that Respondent is passively holding the disputed domain name is inconsistent . Complainant’s own evidence that Respondent is hosting a webpage with a login facility for users. Respondent’s webpage is simple, but it does contain a number of statements namely, “Ownership List”, “CommScope Database” and “Inventory Tracking Syst (sic”)” in addition to the login field for the user to “sign in”. It follows that Respondent has made efforts, to some extent or other to create the webpage. That is not passive holding.
Nonetheless, the use of Complainant’s mark as the dominant, and only distinctive element in the disputed domain name is intended on the balance of probabilities to attract, confuse Internet users looking for Complainant’s Internet presence, mislead the users and divert their traffic to Respondent’s website.
This in itself constitutes use of the disputed domain name in bad faith.
There is nothing on Respondent’s website to indicate the identity of Respondent, or to show that Respondent’s website has no connection with Complainant. In fact the statement “CommScope Database” on Respondent’s webpage strongly infers that Complainant has some association with the webpage.
This Panel finds therefore that the disputed domain name is being used on bad faith as a website address to attract and confuse Internet users, who are misled to believe that Respondent’s website is in some was associated with Complainant, which it is not.
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 paragraph 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 <commscopedatabase.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Panelist
Dated: November 28, 2022
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