Marvell Asia Pte, Ltd. v. awais hamid / 700hosting
Claim Number: FA2206002001261
Complainant is Marvell Asia Pte, Ltd. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is awais hamid / 700hosting (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marvellexports.com>, registered with NameCheap, 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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2022; the Forum received payment on June 21, 2022.
On June 21, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <marvellexports.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2022 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@marvellexports.com. Also on June 23, 2022, 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 June 24, 2022.
On June 30, 2022, pursuant to the Forum’s Supplemental Rule 7, Complainant filed a “Supplemental Filing in Accordance with the Forum’s Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy”
On July 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Marvell Asia Pte, Ltd., is a large multinational corporation with offices throughout the world, including in Australia, Brazil, Korea, UK, and the United States. Complainant has rights in the MARVELL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,665,299 registered December 24 2002). See Compl. Annex 10. Respondent’s <marvellexports.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the MARVELL mark in its entirety and adds the term “exports” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <marvellexports.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the MARVELL mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page that displays Complainant’s logo in an attempt to pass off Respondent as affiliated with Complainant. Respondent attempted to modify the website after the initiation of the proceedings.
Respondent registered and uses the <marvellexports.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business. Respondent attempted to modify the website after the initiation of the proceedings. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MARVELL mark.
B. Respondent
Respondent, awais hamid / 700hosting, registered the <marvellexports.com> domain name on April 15, 2022. See WhoIs Information.
In two very brief e-mails, which the Panel accepts as the Respondent’s response to this action, the Respondent states in the first e-mail that he “registered thew [sic.] domain for one of my client...he has put in under construction mode. . . as you saw in screenshots that dummy ipsum lorem and there was on the website. Do we need to remove the logo.”
In the second e-mail Respondent states that “The client has no plans of violating copyrights and they just installed a there with dummy lorem ipsum. The website is now taken down. Please let us know if you want our client to make any specific changes like logo etc.”
C. Additional Submissions
Complainant argues that the removal of infringing content on the disputed domain name is an acknowledgement that the Respondent lacked legitimate rights to the domain name and for purposes of the UDRP does not change the fact that the domain name was registered and used in bad faith.
Under the Forum’s Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s). See Supplemental Rule 7.
Panels are generally reluctant to accept additional unsolicited submissions especially when those submissions contain arguments that could have been foreseen and should have been included in the original Complaint. However, Panels can accept additional submissions with respect to new allegations or evidence presented by the Respondent which may not have been able to have been foreseen.
In this case, the Panel views will accept Complainant’s additional submission for the sole purpose of its response to the Respondent’s removal of infringing materials on the disputed domain name. Each of the other elements of the additional submission, however, amount merely to a restatement of the facts and issues discussed in Complainant’s original submission and therefore are not needed by the Panelist to make its decision.
1. Complainant has been using the MARVELL mark (“Mark”) in connection with the manufacturing, sale and distribution of integrated circuits and semiconductors since 1995. Complainant owns numerous registered trademarks globally all of which are valid and in full force and effect as of the date of this complaint.
2. The disputed domain name <marvellexports> is identical or confusingly similar to the Mark under the Policy.
3. Complainant has not licensed or otherwise authorized Respondent to use its Mark, nor is Respondent commonly known by the Mark. In addition, Respondent is not using the domain name in connection with a bona fide offering of goods or services under the Policy.
4. The removal of the alleged infringing material, including a logo that is nearly identical to the Complainant’s logo, from the website hosted on the disputed domain name reinforces the notion that the Complainant lacks rights and legitimate interests in the disputed domain name.
5. Complainant has established that the disputed domain name has been registered and used 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:
(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.
Complainant asserts rights in the MARVELL mark based upon the registration with the USPTO (e.g., Reg. No. 2,665,299 registered December 24, 2002). See Compl. Annex 10. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Complainant provides ample evidence of trademark registrations around the world of the MARVELL mark registered to Marvell International Ltd. Though the Complainant does not provide information in its Complaint regarding the relationship between Marvell International Ltd. and Complainant, independent research by the Panel shows that the United States trademarks for MARVELL have in fact been assigned from Marvell International Ltd. to the Complainant, Marvel Asia Pte., Ltd. Since Complainant provides evidence of registration of the MARVELL mark with the USPTO, the Panel finds that the Complainant has rights in the MARVELL mark under Policy 4(a)(i).
Complainant argues Respondent’s <marvellexports.com> domain name is identical or confusingly similar to Complainant’s MARVELL mark. The addition of a gTLD and a generic term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
The term “exports” when added to the a mark in the domain name has been found by other panels to be confusingly similar to the mark. See Puma SE v. Puma, Exports Pvt Ltd, D2021-1757 (WIPO July 30, 2021)(Complainant succeeded on the first element of the Policyin relation to the pumaexports.com), and The term Jatinder Singh Bimbrah v. Privacyprotect.org Domain Admin / imagineRay, Manpreet Singh, D2013-1397 (WIPO September 24, 2013)(the disputed domain name <inderexport.com> is found confusingly similar to the trademark INDER in which the Complainant has rights.). Similarly, the Panel finds here that the disputed domain name, <marvellexports.com> is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, 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”).
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Names because the Respondent is not commonly known by either of the Disputed Domain Names nor has it been authorized by Complainant to register or use the MARVELL mark. Under Policy ¶ 4(c)(ii), relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence affirming otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in a disputed domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). Here, the WHOIS of record identifies Respondent as “awais hamid/700hosting” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its MARVELL mark in the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <marvellexports.com> domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses. An attempt by a respondent to pass itself off as an affiliate of the complainant under false pretenses may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Here, Complainant has provided screenshots of the content displayed on the disputed domain name’s website. Although much of the language is what the Respondent has called “dummy text” containing nonsensical text such as “lorem ipsum”, and the website contains graphics purporting to sell “tank tops”, “eyewear”, jeans and accessories, at the top of the webpage is a logo that is extremely similar to Complainant’s copyrighted logo. Therefore, even though the website purports to sell goods unrelated to Complainant’s business, the combination of the use of dummy text and the near identical copy of the Complainant’s logo make it clear to the Panel that the display of unrelated goods is really an attempt to make its site appear as if it is offering a bona fide service, when in reality it is more likely than not attempting to profit off of the goodwill of the Complainant.
Although Respondent argues that it took down the content from its website in response to the Complaint, the removal of such content not only does not cure the Respondent’s actions, but rather is a further demonstration of its lack of rights and legitimate interests in the disputed domain name. See Int’l Info. Sys. Security Certification Consortium (ISC)2 v. Rifin d.o.o., FA 145282 (Forum Apr. 25, 2003) (noting that “[t]he modification of a website after the initiation of a dispute has been found to demonstrate the lack of rights or legitimate interests.” See also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving complainant’s “cease and desist” notice); Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and respondent is not commonly known by the domain name)
Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Under the third requirement of the Policy, the Complainant must establish that each of the Disputed Domain Names have been registered and are being used in bad faith by the Respondent. “These are conjunctive requirements; both must be satisfied for a successful complaint.” Warner Bros. Entertainment Inc. v. Karl Allberg FA2002001881913 (Forum Feb. 19, 2020).
As an initial matter, the Panel notes that Respondent claims that the domain name belonged to its client and therefore implies that it is not the ultimate owner.
That said, the Respondent provides no other evidence in its response. The Respondent does not name its client, does not provide a copy of an agreement to do the work, nor any other indicia that supports his claims. Regardless of whether such proof was provided, however, previous Panels have found that “acting in the name or on behalf of a client does not waive any Registrant of the domain name of the obligation to show good faith in the registration and use of the domain name for which registration is sought.” See UBS AG v. Jouet Daniels, FA 1804001783500 (Forum May 30, 2018).
This issue has also come up in several other cases recently, where similar responses were filed. See Allianz v. Harryson Trey, D2021-1309 (WIPO Jul. 1, 2021) and National Carriers, Inc. v. Kenkoh Darlene Mesei D2021-1533 (WIPO Aug. 27, 2021). In neither case did the panels directly address responses in terms of whether those statements can be used to refute bad faith. However, both cases found in favor of the Complainant. This Panel agrees that the mere unsubstantiated assertion that the disputed domain names were registered by a third party does not absolve the named registrant of a domain name from understanding and complying with its obligations under a domain name registration agreement which it “signed.” In other words, for purposes of the Policy, even if there were a different beneficial owner of the domain name, liability under the Policy is borne by the named registrant in the registration agreement. Therefore, for purposes of evaluating bad faith, the Respondent is responsible for the registration of the disputed domain names and their use regardless of whether it controlled such registration or use.
Complainant argues that Respondent has registered and used <marvellexports.com> in bad faith because (i) the Complainant was on notice of Complainant’s rights in the MARVELL marks when it registered the domain name; 92) Respondent’s use of Complainant’s copyrighted logo constitutes bad faith; and (3) Respondent registered the disputed domain name in bad faith in order to disrupt Complainant’s business and pass itself off as Complainant.
The Panel agrees with Complainant that Respondent has registered and used the disputed domain name in bad faith in violation of the Policy.
Complainant asserts that, due to its extensive list of trademark registrations and the success of its business, Respondent must have had constructive knowledge of Complainant's rights in the MARVELL mark when Respondent registered the disputed domain name. However, arguments concerning constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy.").
Complainant further argues that Respondent’s use of Complainant’s logo and copyrights at the disputed domain name indicate that Respondent had actual knowledge of Complainant and its rights. Although constructive knowledge is not evidence of bad faith under the Policy, actual knowledge certainly is evidence of bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). The Panel agrees with Complainant that Respondent must have had actual knowledge about the Complainant’s marks when it registered the domain name as it used a nearly identical copy of Complainant’s logo on its own website.
In addition, the Panel finds it more likely than not that Respondent engaged in bad faith in an attempt to disrupt a complainant’s business under Policy ¶ 4(b)(iii). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”). As noted above, Complainant has provided evidence that Respondent utilized Complainant’s logo and mark an effort to misrepresent the disputed domain name as affiliated with Complainant
Complainant contends that Respondent’s efforts to remove infringing content from the resolving website further enhance a finding of bad faith. As Complainant rightfully points out in its Complaint, Panels generally decline to consider a Respondent’s “remedial measures” taken after the filing of a complaint because the Respondent’s use is determined at the time of the filing of the Complaint. Although some panels have found that removal of content after receiving a Complaint further demonstrates a Respondent’s bad faith, this Panel disagrees that this is always true, and further believes it is unnecessary in this case to examine such activity.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marvellexports.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: July 19, 2022
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