CommScope, Inc. of North Carolina v. Kundrod, Gita J. / JPK Drafting & Design LLC
Claim Number: FA2301002028806
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Kundrod, Gita J. / JPK Drafting & Design LLC (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscopeorder.com>, registered with Register.com, Inc..
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 Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 24, 2023; Forum received payment on January 24, 2023.
On January 27, 2023, Register.com, Inc. confirmed by e-mail to Forum that the <commscopeorder.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 January 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@commscopeorder.com. Also on January 27, 2023, 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 February 23, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, CommScope, Inc., offers broadband solutions, enterprise solutions, and wireless solutions, as well as a wide range of products including antennas, cables, connectors and networking systems. Complainant asserts rights to the COMMSCOPE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 1,865,198, registered November 29, 1994). See Compl. Ex. 1A. Respondent’s <commscopeorder.com> domain name is confusingly similar to Complainant’s mark because it contains the COMMSCOPE mark in its entirety, merely adding the generic term “order”, and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <commscopeorder.com> domain name. Respondent is not licensed or authorized to use Complainant’s COMMSCOPE mark and is not commonly known by the disputed domain name. 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 host competing pay-per-click links. Additionally, Respondent has made no demonstrable preparations to use the disputed domain name.
Respondent registered and uses the <commscopeorder.com> domain name in bad faith. Respondent uses Complainant’s COMMSCOPE mark to divert internet users to a resolving website that directly competes with Complainant by hosting pay-per-click links. Additionally, Respondent registered and uses the disputed domain name to pass off as Complainant. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COMMSCOPE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is in the business of providing broadband, enterprise and wireless solutions, as well as a wide range of products including antennas, cables, connectors and networking systems.
2. Complainant has established its rights to the COMMSCOPE mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 1,865,198, registered November 29, 1994).
3. Respondent registered the <commscopeorder.com> domain name on January 16, 2023.
4. Respondent uses the disputed domain name to host competing pay-per-click links but has made no demonstrable preparations to use 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the COMMSCOPE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 1,865,198, registered November 29, 1994). See Compl. Ex. 1A. 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)). As Complainant has provided evidence of registration of the COMMSCOPE mark, the Panel finds that 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 COMMSCOPE mark. Complainant contends Respondent’s <commscopeorder.com> domain name is confusingly similar to Complainant’s mark because it contains the COMMSCOPE mark in its entirety, merely adding the generic term “order”, and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name. The addition of a generic term and a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the COMMSCOPE 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s COMMSCOPE mark and to use it in its domain name, adding the word “order”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <commscopeorder.com> domain name on January 16, 2023;
(c) Respondent uses the disputed domain name to host competing pay-per-click links but has made no demonstrable preparations to use the disputed domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have rights or legitimate interests in the <commscopeorder.com> domain name as Respondent is not licensed or authorized to use Complainant’s COMMSCOPE 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 “Gita J. Kundrod/JPK Drafting & Design LLC”. See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <commscopeorder.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 host competing pay-per-click links that actually use the COMMSCOPE name. The use of a disputed domain name to resolve to a webpage displaying links to competing third parties is 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 The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”). Here, Complainant has provided a screenshot of the disputed domain name’s resolving website showing links to “CommScope Cable”, “CommScope Uniprise”, “CommScope Stock”, “Scope Communications”, and “Commscope Fiber”. See Compl. Ex. 9. Thus, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) or fair use under Policy ¶ 4(c)(iii);
(g) Complainant submits that Respondent has made no demonstrable preparations to use the <commscopeorder.com> domain name. A respondent’s failure to associate content with a disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).Complainant points to the lack of content other than the third party hyperlinks, as well as a screenshot of the disputed domain name’s resolving website which has had all content removed. See Compl. Ex. 9; Compl. Ex. 10. Therefore, 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) 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 formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest 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 contends that Respondent registered and uses the <commscopeorder.com> domain name in bad faith and that Respondent uses Complainant’s COMMSCOPE mark to divert internet users to a resolving website that directly competes with Complainant by hosting pay-per-click links. A “competitor” is defined 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.” See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (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”). The use of a confusingly similar domain name to redirect internet users to a competing website is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Complainant points to the full incorporation of the COMMSCOPE mark in the disputed domain name, as well as, the inclusion of pay-per-click links on the disputed domain name’s resolving website. See Compl. Ex. 9. As such, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent registered and uses the <commscopeorder.com> domain name to pass itself off as Complainant. The use of a disputed domain name by a respondent to pass itself off as a complainant or to create the impression of endorsement or sponsorship by a complainant is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Here, Complainant points to the incorporation of CommScope advertising links into the disputed domain name’s resolving website. See Compl. Ex. 9. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent registered the <commscopeorder.com> domain name with actual knowledge of Complainant’s rights in the COMMSCOPE mark. The Panel will determine whether Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant points to the distinctiveness of the COMMSCOPE mark, and the inclusion of links on the disputed domain name’s resolving website with CommScope product names and stocks. See Compl. Ex. 9. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under 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 <commscopeorder.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 27, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page