DECISION

 

Premier Farnell Corp. v. Qianya Wang

Claim Number: FA2507002164196

 

PARTIES

Complainant is Premier Farnell Corp. ("Complainant"), represented by Jennifer A. Van Kirk of Womble Bond Dickinson (US) LLP, Arizona, USA. Respondent is Qianya Wang ("Respondent"), represented by Douglas M Isenberg of The GigaLaw Firm, Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nework.us>, registered with GoDaddy.com, 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.

 

 Dennis A. Foster as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 3, 2025; Forum received payment on July 3, 2025.

 

On July 7, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <nework.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On July 9, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@nework.us. Also on July 9, 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.

 

A timely Response was received and determined to be complete on July 25, 2025.

 

The Complainant filed an Additional Submission on July 29, 2025 and the Respondent replied in an Additional Submission on July 30, 2025. Per Rule 10 of the Policy Rules and Forum Supplemental Rule 7, the Panel has exercised its discretion to accept both Additional Submissions because they were brief and provided new, pertinent information.

 

On July 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dennis A. Foster 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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: IDENTITY OF RESPONDENT REGISTRANT

The Panel notes that the name of the Respondent is the same as the registrant of the disputed domain name. The Complainant objects that this is not the same name as the name of the company that offers goods and services for sale at the disputed domain name website, i.e., Newcom, LLC.

 

The Respondent has explained that the daughter registered the disputed domain name whereas the head of Newcom, LLC is the mother and that together they run the company. The Panel finds this explanation credible. The Panel finds Forum and the Registrar have collaborated to identify the registrant of the disputed domain name who is the Respondent in this proceeding.

 

PARTIES' CONTENTIONS

A. Complainant

--The disputed domain name, <nework.us>, is confusingly similar to the Complainant's NEWARK trademark with just one letter changed. This minor change does not alter the visual impression, phonetic sound or overall commercial impression of the disputed domain name. This is merely typosquatting.

 

--The addition of a generic ccTLD, ".us", is not a distinguishing feature.

 

--The Respondent is not commonly known by the disputed domain name, and there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

 

--The Respondent registered the disputed domain name on July 4, 2023, i.e., decades after the Complainant began doing business with its NEWARK trademark.

 

--The Respondent is not a licensee of the Complainant nor affiliated with the Complainant in any way.

 

--It may be inferred that the Respondent had actual knowledge of the Complainant and its NEWARK trademarks when the Respondent registered the disputed domain name.

 

--There is no plausible circumstance under which the Respondent could legitimately use the disputed domain name.

 

--The Respondent's use of the disputed domain name is an infringement of the Complainant's trademark rights.

 

--The Respondent's registration of a disputed domain name that is confusingly similar to the Complainant's trademark is sufficient to find bad faith registration and use.

 

--The Respondent's bad faith is shown by use of the disputed domain name to attract for commercial gain users to its website, which is evidence of bad faith registration and use.

 

--The Respondent sells goods that compete with those of the Complainant.

 

--The disputed domain name should be transferred to the Complainant.

 

B. Respondent

--The disputed domain name, <nework.us>, is not confusingly similar to the Complainant's NEWARK trademark because changing the "a" to "o" creates a different word with a different meaning.

 

--"Nework" is a "portmanteau" word like "brunch" (breakfast and lunch) or "motel" (motor and hotel) that combine two words to create a new word. "Nework" combines the meanings of "new" and "work" but has nothing to do with the Complainant's NEWARK trademark.

 

--The Respondent has rights or legitimate interests in the disputed domain name because it was using the disputed domain name for a bona fide offering of goods and services before being notified of this dispute.

 

--The Respondent does not sell goods that compete with or that are similar to the goods covered by the Complainant's NEWARK trademark.  

 

--"Nework" may be distinctive enough to be a trademark for some goods and services, but it is already in use for other goods and services.

 

--The Respondent only became aware of the Complainant and its NEWARK trademark a few months ago because the Complainant notified its plans to file an opposition to the Respondent's pending "nework" U.S. Federal trademark registration application.

 

--Constructive knowledge of the Complainant's NEWARK trademark is not enough to show that the Respondent registered the disputed domain name in bad faith.

 

--The Respondent's smartboard product does not compete with the Complainant's products and services.

 

--The existence of numerous third-party uses of, and registrations for, marks that consist of either "Newark" or "nework" is further evidence of lack of any Respondent bad faith.

 

C. Additional Submissions

1) Complainant

--The Respondent had actual prior knowledge of the Complainant and has targeted the Complainant because the Respondent has bid on the NEWARK trademark with Google ads.

 

--The Complainant and the Respondent both operate e-commerce websites selling webcams and conference phones and thus both offer competing services and products.

 

2) Respondent

-Although the Respondent purchases search-based advertising with Google, it has never included "Newark" as a keyword and, instead, has purchased generic words and phrases that describe its own product such as "smartboard", "whiteboard", and "classroom screens".

 

--The Complainant does not have an exclusive NEWARK trademarked right to sell webcams or conference phones or to prevent the Respondent from selling these products.

 

FINDINGS

The Complainant is a distributor of goods and services inter alia in the fields of electronics and computer equipment and components, and electric motors and machinery. The Complainant and its predecessors started business in 1934 in Chicago using the NEWARK trademark which the Complainant has registered in the USA and the Americas.  (For example: USA Federal trademark registration no. 3820458, registration date July 20, 2010, Int. Cl. 016, 035, 040, 041, 042 for catalogues and guides for electronics inter alia; and USA Federal trademark registration no. 6709477, registration date April 26, 2022, Int. Cl. 007, 009, 011, 035, 038, 039, 042 for a wide variety of electronic goods.  The Complainant also owns similar registrations in Canada, Mexico and Brazil.) The Complainant conducts business at its website at <newark.com> which it has owned since 1994, and also is a distributor of webcams, interactive displays and conference phones.

 

The Respondent is a small start-up that began doing business in 2023 at the disputed domain name <nework.us>. The Respondent concentrates on making and selling smart boards and webcams.     

 

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 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

The Complainant's first burden of proof under the Policy in this proceeding is to show that it has trademark rights in the disputed domain name <nework.us>. To accomplish this, the Complainant has exhibited copies of its NEWARK trademark registrations in the US and elsewhere in the Americas. The Complainant contends that because the only difference between its trademark and the disputed domain name is the substitution of the letter "o" for the letter "a", the disputed domain is confusingly similar to the Complainant's NEWARK trademark and therefore the Complainant has trademark rights in the disputed domain name.  As the Complainant points out, ccTLDs are not taken into account when analyzing for identity or confusing similarity under Policy paragraph 4(a)(i).

 

The Respondent counters that the difference of one letter can result in a totally different word with a totally different meaning as in, for example, "Spain" and "stain". In our case, the Respondent further contends, the Complainant's NEWARK trademark is commonly understood to refer to New Jersey's most populous city and its internationally important airport. But the blended or "portmanteau" word "nework" in the disputed domain name refers to "new work". Thus NEWARK and "nework" are not confusingly similar.  

 

The Panel agrees with the Respondent. Furthermore, taking into account that the Complainant's NEWARK trademark refers to the Complainant's electronics distributorship service and that the Respondent's <nework.us> domain name is used to sell a smartboard that the Respondent produces, the Panel finds it clear that the disputed domain name is not confusingly similar to the Complainant's NEWARK trademark. (See, e.g., Natural Lawn of America, Inc. v. Jeff Edwards, FA 1372111 (Forum Mar. 16, 2011) (re changing one letter can lead to a different, new word). And also Forest Laboratories, Inc. v. Natural Products Solutions LLC, WIPO D2011-1032 (in a similar vein)).

 

The Policy requires the Complainant to prevail in each paragraph of paragraphs 4(a)(i)(ii) and (iii). The Complainant having failed to prevail in paragraph 4(a)(i), the Panel does not need to reach paragraphs (ii) and (iii).

 

REVERSE DOMAIN NAME HIJACKING

The Respondent has requested that the Panel find that the Complainant filed this Complaint in bad faith or to harass the Respondent per Rule 15(e). The Panel disagrees and instead finds the Complainant filed the Complaint seeking to resolve a legitimate dispute. Therefore, the Panel declines to make a finding of Reverse Domain Name Hijacking.

 

DECISION

Having not established all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <nework.us> domain name REMAIN WITH Respondent.

 

 

 

Dennis A. Foster, Panelist

Dated: August 11, 2025