DECISION

 

Qorvo US, Inc. v. grant allen brown

Claim Number: FA2401002078259

PARTIES

Complainant is Qorvo US, Inc. ("Complainant"), represented by Chris Civil of Cobalt LLP, California, USA. Respondent is grant allen brown ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qorvo-uk.com>, registered with Ligne Web Services SARL dba LWS.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.

 

On January 10, 2024, Ligne Web Services SARL dba LWS confirmed by e-mail to Forum that the <qorvo-uk.com> domain name is registered with Ligne Web Services SARL dba LWS and that Respondent is the current registrant of the name. Ligne Web Services SARL dba LWS has verified that Respondent is bound by the Ligne Web Services SARL dba LWS 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 11, 2024, Forum served the Complaint and all Annexes, including a French and English Written Notice of the Complaint, setting a deadline of January 31, 2024 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@qorvo-uk.com. Also on January 11, 2024, the French and English 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 in French and English.

 

On February 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:

 

"Pursuant to verification received from the Registrar, the Registration agreement is in French. You have two options: 1. Translate the Complaint and Table of Contents into French, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English."  

 

Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. Complainant points out that the contact information for the Respondent provided by the Registrar shows a physical address in the United Kingdom. Complainant states, uncontroversially, that "English is widely used and understood in the United Kingdom" and that Respondent is likely to have knowledge and understanding of the English language.

 

The Panel agrees and determines, pursuant to Rule 11(a), that the proceedings should be conducted in English (see for example, ZB, N.A. v. Ming Hua Chen, Chen Ming Hua, WIPO Case No. D2017-0512) which found that the Respondent had sent emails to the complainant's representative in English, evidencing that the Respondent understood English and was able to communicate in English. The panel accepted the filings by the complainant in English and the correspondence by the Respondent in Chinese and rendered its decision in English).

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant asserts trademark rights in QORVO.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant manufactures and sells semiconductors, radio-frequency systems, and related products by reference to the trademark, QORVO;

2.       Complainant is the owner of United States Patent & Trademark Office ("USPTO") Reg. No. 7,032,467, registered April 18, 2023, for the QORVO trademark; and

3.       the disputed domain name was registered on December 30, 2023.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark QORVO with the USPTO, a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by hyphenation of the country name abbreviation, "UK", to the trademark.  The Panel finds that the domain name is confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) finding that "[w]here a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as "[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i)."

 

Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own.  Complainant's pre-Complaint letter of demand went unanswered. It asserted that "we have documented evidence that the <qorvo-uk.com> domain name is being used to send unauthorized email messages."  The Complaint itself states that:

 

"On information and belief, Respondent currently uses the Domain Name address to send out email communications that impersonate Complainant in a phishing scam intended to divert revenue from unsuspecting Qorvo clients to Respondent. Complainant has evidence that the Domain Name has been used to send email correspondence."

 

There is no evidence of those emails, nor compelling evidence that any email was sent from an address linked to the disputed domain name. The Panel will have more to say of this shortly but, for the purposes of paragraph 4(c) of the Policy, it finds that the domain name has not been used.

 

It follows that a prima facie case has been made that Respondent has no rights or interest in the domain name (see, for example, Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017): "Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!").

 

The onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds the Respondent has no rights or interests.

 

Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds nothing to support the application of any of those four scenarios in this case. Accordingly, the Complaint must establish, as separate matters, registration in bad faith and use in bad faith. As stated, there is no evidence of use. Complainant's suspicions may have some foundation and, in broad terms, the Panel may draw reasonable inferences pursuant to paragraph 14(b) of the Rules, but it cannot find evidence where none is presented. The highest case Complainant could put forward would be based on so-called, passive holding in bad faith, and the Complaint references the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). However, the preconditions of that case are not met. In particular, there is no evidence that the trademark is well-known and the assertions in the Complaint that it "owns common law rights" and that its trademark is "distinctive and famous" are unsupported.

 

The Panel finds that Complainant has failed to satisfy the third and final element of the Policy because it has not established use in bad faith.

 

WITHOUT PREJUDICE DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <qorvo-uk.com> domain name REMAIN WITH Respondent.

 

 

 

Debrett G. Lyons, Panelist

February 4, 2024