Keysight Technologies v. Bum Lup
Claim Number: FA2212002023518
Complainant is Keysight Technologies (“Complainant”), represented by Emily Cooper of Holland & Hart LLP, Colorado. Respondent is Bum Lup (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keyzight.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on December 9, 2022; Forum received payment on December 9, 2022.
On December 12, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <keyzight.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@keyzight.com. Also on December 12, 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.
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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Keysight Technologies, manufactures test and measurement equipment and related software focused on the electronics and radio fields. Complainant asserts rights in the KEYSIGHT mark based upon registration with the United States Patent and Trademark Office(“USPTO”) (e.g., reg. no. 4,823,005, registered September 29, 2015). Respondent’s <keyzight.com> domain name is confusingly similar to Complainant’s mark because it uses the letter “Z” in place of the “S” in Complainant’s mark and the generic top-level domain name(“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <keyzight.com> domain name. Respondent is not licensed or authorized to use Complainant’s KEYSIGHT mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent uses the disputed domain name to send fraudulent emails to customers. Finally, the disputed domain name does not resolve to a working website.
Respondent registered and uses the <keyzight.com> domain name in bad faith. First, Respondent uses the disputed domain name to disrupt Complainant’s business. Second, Respondent uses the disputed domain name to operate an impersonation phishing scheme. Third, Respondent is engaged in typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the KEYSIGHT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <keyzight.com> 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 asserts rights in the KEYSIGHT mark based upon registration with the United States Patent and Trademark Office(“USPTO”) (e.g., reg. no. 4,823,005, registered September 29, 2015). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also 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)). Complainant has provided evidence of its registration of the KEYSIGHT mark. The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <keyzight.com> domain name is confusingly similar to Complainant’s mark because it uses the letter “Z” in place of the “S” in Complainant’s mark and the generic top-level domain name(“gTLD”) “.com” to form the disputed domain name. The misspelling of a mark and the addition of a gTLD does not distinguish the disputed domain name from the mark incorporated therein under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018)(“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”); see also Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The Panel finds that the disputed domain name is confusingly similar to the KEYSIGHT mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant asserts that Respondent does not have rights or legitimate interests in the <keyzight.com> domain name because Respondent is not licensed or authorized to use Complainant’s KEYSIGHT mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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). The WHOIS information for the disputed domain name lists the registrant as “Bum Lup”. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <keyzight.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to send fraudulent emails to customers. The use of a disputed domain name to send fraudulent emails is neither considered a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016)(“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Complainant has submitted a screenshot of an email received by Complainant’s customer from the disputed domain name matching Complainant’s invoice number and total balance due. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent does not use the <keyzight.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name does not resolve to a working website. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018)(“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant has introduced a screenshot of the disputed domain name’s inactive resolving website. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant asserts that Respondent registered and uses the <keyzight.com> domain name in bad faith because Respondent uses the disputed domain name to disrupt Complainant’s business using fraudulent emails. The use of a disputed domain name to send fraudulent emails supports a finding of bad faith registration and use under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016)(“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). To support this assertion, Complainant has submitted a screenshot of an email received by Complainant’s customer from the disputed domain name matching Complainant’s invoice number and total balance due. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent uses the <keyzight.com> domain name to operate an email impersonation phishing scheme. The use of a disputed domain name in furtherance of a phishing scheme establishes bad faith registration and use under Policy ¶ 4(b)(iii). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017)(“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015)(“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As support, Complainant has submitted a screenshot of an email received by Complainant’s customer from the disputed domain name matching Complainant’s invoice number and total balance due. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent is engaged in typosquatting. Typosquatting is prima facie evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018)(“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”). To support this contention, Complainant points to the confusing similarity between Respondent’s <keyzight.com> domain name and Complainant’s KEYSIGHT mark. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the KEYSIGHT mark at the time of registering the <keyzight.com> domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018)(“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 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.”). To support this assertion, Complainant points to its trademark registrations as well as Respondent’s use of the domain name in an impersonation phishing scheme. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <keyzight.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
January 13, 2023
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