L-com, Inc. v. Neddal Fayyad
Claim Number: FA1611001703680
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is Neddal Fayyad (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lcomstore.com>, registered with Domain.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2016; the Forum received payment on November 18, 2016.
On November 21, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <lcomstore.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 November 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2016 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 firstname.lastname@example.org. Also on November 21, 2016, 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 November 29, 2016.
On December 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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.
Complainant has used the name and mark L-COM continuously since 1985 in connection with the marketing of wired and wireless connectivity products for the electronics and data communications industries.
Complainant holds a registration for the L-COM trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,697,029, registered on March 18, 2003).
Respondent registered the domain name <lcomstore.com> on or about October 19, 2016.
The domain name is confusingly similar to Complainant’s L-COM mark.
Respondent has not been commonly known by the domain name.
Respondent fails to make a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
The website resolving from the domain name is inactive and displays the message: “This site under development.”
Respondent has offered to sell the domain name to Complainant.
Respondent has no practical use for the domain name other than to disrupt Complainant’s business.
Respondent knew or should have known of Complainant’s rights in the L-COM mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
The lack of a hyphen, taken together with the inclusion of the word “store” in the <lcomstore.com> domain name, adequately differentiates it from Complainant’s L-COM mark.
Many domain names contain the word “store,” and there is now a “.store” generic Top Level Domain.
Respondent does not have any e-mail address connected with the domain name.
Respondent has rights in the domain name because it is allowed to register available domain names.
Complainant “doesn’t know my business.”
The domain name has not been used at all, so, therefore, it cannot have been used in bad faith.
Complainant has not provided any evidence of Respondent’s bad faith use of the domain name.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the same domain name has been registered and is being used in bad faith.
Complainant has rights in the L-COM trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. v. Ryan G Foo, FA 1627542 (Forum Aug. 9, 2015) (finding that a UDRP Complainant had rights in a mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of that mark with the United States Patent and Trademark Office.).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Saudi Arabia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <lcomstore.com> domain name is confusingly similar to Complainant’s L-COM mark. The domain name contains the mark in its entirety save for the deletion of the hyphen between its terms and the addition of the generic word “store,” which can be taken to relate to Complainant’s business, and of a generic Top Level Domain (“gTLD”) (in this case “.com,”), which is required of every domain name. The core portions of the mark and of the domain name are phonetically identical. In these circumstances, the alterations made to the mark in forming the domain name do not save it from the realm of confusing similarity under the standards of the Policy.
See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and of a gTLD to the mark of another in creating a domain name insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i)).
See also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Forum June 19, 2000) (finding the domain name <cspan.net>, which omitted the hyphen from the trademark C-SPAN, confusingly similar to that mark).
Further, see Geoffrey, LLC v. Toys R Russ, WIPO Case No. D2011-0830, August 8, 2011:
Any visual differences [between a UDRP complainant’s mark and questioned domain names] become virtually nonexistent when the Domain Names are spoken.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
The Complaint before us alleges, among other things, that:
a. Respondent has not been commonly known by the lcomstore.com> domain name;
b. Respondent fails to provide a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name; and
c. The website resolving from the domain name is inactive and displays the message: “This site under development.”
These allegations are accompanied by extensive supporting documents. Those materials show, with respect to Complainant’s first assertion, that the contested domain name was first registered by Respondent on October 19, 2016, and that the registrant of the domain name is solely “Neddal Fayyad.” With regard to the second and third contentions, the proofs accompanying the Complaint demonstrate that Respondent has made no use of the domain name from the time it was registered. Complainant has thus made out a sufficient prima facie showing under this head of the Policy.
Faced with these assertions, Respondent does not deny that it has not been commonly known by the disputed domain name, and it concedes that the domain name has not been used at all. As importantly, notwithstanding that it has had both an opportunity, and, in light of Complainant’s prima facie case, an obligation to do so, Respondent has failed to offer any evidence as to the nature of its business, or of its business plans or of any “demonstrable preparations to use” the domain name as provided in Policy ¶ 4(c)(i). Indeed, Respondent has failed to submit any evidence at all. In these circumstances, we conclude both that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii), and that Respondent has not shown that it has any rights to or legitimate interests in the <lcomstore.com> domain name.
Policy ¶ 4(a)(iii) requires that, in order to prevail in this proceeding, Complainant must demonstrate both that Respondent has registered and that it is using the contested domain name in bad faith.
We are persuaded by the evidence that Respondent knew of Complainant and its rights in the L-COM mark when it registered the <lcomstore.com> domain name. This stands as proof of Respondent’s bad faith in registering the domain name. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a respondent was “well-aware” of a UDRP complainant’s mark at the time of its registration of a confusingly similar domain name).
In response to Complainant’s contention that Respondent is using the <lcomstore.com> domain name in bad faith, Respondent counters that the domain name has not been used at all, so it cannot have been used in bad faith. This essential issue was addressed in the seminal case Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). There, as here, the domain name in question was not in use from the time of its registration to the time of decision and the respondent had offered no evidence that a functioning website was being developed. In those circumstances, the presiding panelist there observed that:
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
Respondent here has contented itself with answering Complainant’s assertion of bad faith in using the domain name by declaring simply that Complainant “doesn’t know my business.” This was Respondent’s opportunity to shed light on the nature and objectives of its business and the state of its development. By instead substituting persiflage for proof, Respondent has left to the realm of pure speculation whether it has, or soon will have, a legitimate business, and, if so, what is its nature and how using in support of it a domain name that is confusingly similar to Complainant’s mark might be justified. We have no brief to indulge in such speculation. Rather, in all the circumstances, we conclude, as did the panelist in Telstra, that, in the utter absence of proof to the contrary:
[I]t is not possible to conceive of any plausible … active use of the domain name by the Respondent that would not be illegitimate.
Accordingly, we determine that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii), and that Respondent has both registered and is using the <lcomstore.com> domain name in bad faith.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <lcomstore.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 5, 2016
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