DECISION

 

Ruckus IP Holdings LLC v. Chang Odem / ruckus-tw.com

Claim Number: FA2501002133157

 

PARTIES

Complainant is Ruckus IP Holdings LLC ("Complainant"), represented by William Schultz of Merchant & Gould, Minnesota, USA. Respondent is Chang Odem / ruckus-tw.com ("Respondent"), Taiwan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ruckus-tw.com>, registered with Squarespace Domains II LLC.

 

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 2, 2025; Forum received payment on January 2, 2025.

 

On January 3, 2025, Squarespace Domains II LLC confirmed by e-mail to Forum that the <ruckus-tw.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 January 6, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2025 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@ruckus-tw.com.

 

Also on January 6, 2025, 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 January 28, 2025 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the RUCKUS mark established by its ownership of the portfolio of registrations described below and its extensive use of the mark in association with a wide range of Wi-Fi and computer products and related services since at least as early as 2005, including on its website at <www.ruckusnetworks.com>.

 

In this regard Complainant refers to a media article dated September 13, 2005, which is exhibited in an annex to the Complaint, describing its name change and a $9 million VC investment in the company.

 

Furthermore, Complainant has exhibited a screen capture of its own website at <www.ruckusnetworks.com> and other documentation showing its extensive use of the mark.

 

Firstly, Complainant alleges that the disputed domain name is identical or confusingly similar to the RUCKUS mark in which it has rights arguing that the disputed domain name contains the RUCKUS mark in its entirety; and neither the addition of the hyphen, nor letters "tw" which are a reference to Taiwan, nor the generic Top-Level Domain ("gTLD") extension <.com> contribute any distinguishing feature to the disputed domain name. 

 

In this regard Complainant cites the decisions in Morgan Stanley v. King Domnick MC Garil, FA 2108195 (Forum Aug. 20, 2024) (holding addition of the term "tw" (the abbreviation for Taiwan) was insufficient to distinguish the domain name from the registered mark); and Mediacom Comm. Corp. v. Milen Radumilo, FA 2032281 (Forum Mar. 24, 2023) (holding "the mere addition of the generic term 'security' as well as the '.com' gTLD … may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i).").

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that:

·       Respondent is not commonly known by the RUCKUS mark and has not received Complainant's permission to use the mark citing 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 has not granted any license or other permission to Respondent to use the RUCKUS mark;

·       a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that the disputed domain name is being passively held, resolving to the Registrar's landing 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 is not using the disputed domain name for legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent registered a confusingly similar version of the RUCKUS mark;

·       the exhibited screen capture of the website to which the disputed domain name resolves shows that Respondent has not placed any content on its website;

·       Respondent's failure to use the disputed domain name in connection with a bona fide offering of goods or services shows a lack of legitimate rights pursuant to Policy ¶ (c)(i); citing George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007), (the holding of an inactive website is not a protected use under Policy ¶¶ 4(c)(i) and 4(c)(iii));

·       there are no legitimate rights gained by passively holding a domain name. Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) ("The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).");

·       Respondent has failed to make any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;

·       Additionally, Respondent is not using the disputed domain name for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because it has placed no content on the website to which it resolves.

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that RUCKUS is a distinctive, widely recognized trademark and service mark, and Complainants mark was registered and in continuous use prior to the Respondent's registration of the disputed domain name on December 20, 2024

 

It is further contended that the evidence shows the disputed domain name was registered to trade upon the goodwill associated with Complainant's RUCKUS mark and to divert traffic away from Complainant's own websites. Complainant adds that there is no other reason to register a domain name that combines the RUCKUS mark that relates to Complainants products together with the term "tw" other than to trade on Complainant's rights.

 

Such use shows Respondent had knowledge of Complainant's RUCKUS mark and registered the disputed domain name to deceive unsuspecting web visitors; and registration of the disputed domain name with the actual knowledge of Complainant's trademark rights in that name shows bad faith pursuant to Policy ¶ 4(b)(ii).

 

Complainant adds that Respondent has also acted in bad faith pursuant to Policy ¶ 4(b)(iii) because as shown in the screen capture, which is exhibited in an annex to the Complaint, it has failed to make active use of the disputed domain name and has never placed any information on the website to which the disputed domain name resolves.

 

Complainant alleges that therefore Respondent registered the disputed domain name and has directed it to the Registrar's landing page which does not have any legitimate content.

 

Such activity with the disputed domain name has disrupted Complainant's business by pointing Internet users to a page that does not exist, and will create the perception that Complainant's business is closed, never existed, or is not a legitimate business. It further can lead to the false association between Complainant and Respondent.

 

Complainant further argues that Respondent's failure to make active use of the disputed domain name but allows it to divert traffic to a non-used landing page constitutes bad faith. See 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Complainant finally expresses the concern that until the disputed domain name is transferred to Complainant, Respondent can use it in any manner, including turning on the MX servers (currently connected to Google servers) to deliver email traffic to unsuspecting customers.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a manufacturer of Wi-Fi and computer products on which it uses the RUCKUS mark and for which it holds a portfolio of trademark and service mark registrations including the following:

·       United States registered service mark RUCKUS registration number 4408482 registered on the Principal Register on September 24, 2013, for services in international class 42;

·       United States registered trademark RUCKUS, registration number 4408483, registered on the Principal Register on September 24, 2013, for goods in international class 9;

·       United States registered service mark RUCKUS registration number 4408484 registered on the Principal Register on September 24, 2013, for services in international class 38.

 

Complainant has an established Internet presence and maintains a website at <www.ruckusnetworks.com>.

 

The disputed domain name was registered on December 20, 2024, and resolves to the Registrar's parking page.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name for the purposes of this proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested convincing evidence of its rights in the RUCKUS mark established by its ownership of the registered trademark and service marks described above and extensive use of the mark by itself and its predecessors in title in the sale of garments and accessories and provision of retail services through its stores and online.

 

The disputed domain name <ruckus-tw.com>, is composed of Complainant's RUCKUS mark in its entirety in combination with a hyphen, the letters "tw", and the generic Top Level Domain ("gTLD") extension <.com>.

 

It is well established that where a domain name at issue contains a complainant's mark in its entirety, a panel may find that the domain name at issue is confusingly similar to the mark relied upon by the complainant.

 

Neither the addition of the hyphen, nor the letters "tw" prevent a finding of confusing similarity between the disputed domain name and Complainant's mark.

 

Furthermore, in the circumstances of this case the generic Top-Level Domain ("gTLD") extension <.com> within the disputed domain name may be ignored for the purposes of comparing Complainant's mark and the disputed domain name, because it would be considered by Internet users to be a necessary technical element for a domain name registration.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the RUCKUS mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed submissions above.

 

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).

 

Registration and Use in Bad Faith

Complainant's mark features as the initial, dominant and only distinctive element in the disputed domain name. The trademark and service mark registrations upon which Complainant relies in this proceeding were all registered on September 24, 2013. The disputed domain name was not registered until December 20, 2024.

 

RUCKUS is a distinctive mark.

 

The disputed domain name has no apparent meaning other than to be a combination of Complainant's mark and the letters "tw", which typically relates to Taiwan. In context the hyphen in the disputed domain name has no significance other than to place emphasis on Complainant's mark by separating it from the letters inferring a reference to the market in Taiwan.

 

On the balance of probabilities, the registrant was aware of Complainant and its mark when the disputed domain name was chosen and registered.

 

There appears to be no plausible reason for registering the disputed domain name other than to take advantage of Complainant's goodwill and reputation in the mark.

 

On the balance of probabilities, therefore, this Panel finds that the disputed domain name was in fact chosen and registered in bad faith, with Complainant's mark in mind with the intention of taking predatory advantage of Complainant's rights and goodwill in the RUCKUS mark.

The exhibited screen capture shows that the disputed domain name is inactive and resolves to the Registrar's parking page. There is no indication that Respondent has put the disputed domain name to any active use or intends to use the disputed domain name for any legitimate or bona fide purpose.

 

In the absence of a Response or other communication or explanation from Respondent, this Panel finds that the passive holding of the disputed domain name by Respondent constitutes use in bad faith for the purposes of the Policy.

 

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ruckus-tw.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

____________________________________________

 

James Bridgeman SC, Panelist

Dated: January 29, 2025