CommScope, Inc. of North Carolina v. fang jun
Claim Number: FA2305002045204
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is fang jun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscopetech.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Complainant submitted a Complaint to Forum electronically on May 18, 2023; Forum received payment on May 18, 2023.
On May 19, 2023, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <commscopetech.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 May 22, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 12, 2023 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@commscopetech.com. Also on May 22, 2023, the Chinese and English language 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 June 16, 2023, 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Preliminary issue on Language of the Proceeding.
Complainant submits that Rules r. 11(a) provides that the Panel has discretion to determine the appropriate language of the proceeding with regard to the “circumstances of the administrative proceeding.” See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement).
Complainant argues that where the domain name has no meaning other than the English term associated with the domain name, the Panel may appropriately determine that the language of the proceeding shall be conducted in English. Morgan Stanley v. NaShan, FA1703414 (Forum Dec. 14, 2016) (holding proceedings in English language because the registration of a .store domain “primarily targets English-speaking Internet users” and the disputed name contains English words).
Moreover, where a Complainant is unable to communicate in a language and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter, it is appropriate to proceed in the English language. The Toronto-Dominion Bank v. Long Xiang, FA1817214 (Forum Dec. 11, 2018).
In this proceeding, the disputed domain name, <commscopetech.com> has no meaning in any language other than English. Thus, the Respondent has to have at least sufficient familiarity with the English language to select those particular characters for registration. Siemens AG v. Li Chang Kong, D2017-1968 (WIPO) (proceeding with English language despite Chinese registration agreement because the disputed domain names consisted of Latin letters, rather than Chinese characters).
Further, Respondent copied CommScope’s English website and connected the disputed domain name to a website server that hosts the English content. If Respondent did not understand English, it would not have been able to copy the English website.
Additionally, Cloudflare is listed as Respondent’s name servers in connection with the disputed domain name. Cloudflare is based in San Francisco, California and conducts business in English. Indeed, the terms of service for Cloudflare are in English (https://www.cloudflare.com/website-terms/).
Complainant argues that Respondent chose to use Cloudflare to perpetuate the scam set forth in this complaint and thus has the proficiency to understand the terms of Cloudflare’s service. Because the disputed domain name itself is in the English language, the website Respondent copied is in English, and Respondent has conducted business with Cloudflare in English, Respondent has sufficient knowledge to understand the English Language.
Further, having to translate would unfairly burden Complainant.
Substantive matters
Complainant claims rights in the COMMSCOPE trademark and service mark established by its ownership of the registrations described below and extensive use of the mark in its communications business including on its website at <www.commscope.com>.
Complainant submits that it offers a wide range of services under the COMMSCOPE mark, including broadband, enterprise and wireless solutions and has done so for many years.
It asserts that it has an extensive Internet and social media presence having registered the <commscope.com> domain name in 1994. It now operates a page on Twitter, which has over 18,100 followers, and maintains a Facebook page at facebook.com/commscope that has over 21,000 likes.
Complainant submits that because of the extensive promotion of the COMMSCOPE brand and trade name, it has developed substantial goodwill and customer loyalty under this distinctive trademark which is widely recognized trademark that predates the registration of the disputed domain name.
The Complainant alleges that the disputed domain name is confusingly similar to the COMMSCOPE mark in which it has rights, arguing that the disputed domain name contains the COMMSCOPE mark in its entirety.
The addition of the element “tech” does not serve to distinguish the disputed domain name from the COMMSCOPE mark, and neither is the generic Top Level Domain (“gTLD") extension <.com> a distinguishing feature. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
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 COMMSCOPE mark and has not received CommScope’s permission to use the mark. Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. 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 asserts that it has not licensed its COMMSCOPE marks to Respondent and it prior rights to the trade name and mark COMMSCOPE date back to at least as early as 1969.
Complainant adds that the COMMSCOPE mark is a coined term and has no meaning other than to designate Complainant’s own products and services. Thus, there would be no reason to use that mark other than to trade on Complainant’s goodwill and to use the disputed domain name to engage in a fraudulent scheme.
Complainant refers to a screen capture of the landing page of the website to which the disputed domain name resolves, which has been adduced in evidence in an annex to the Complaint, and submits that it shows that Respondent is attempting to pass itself off as Complainant and endeavoring to trick consumers into believing that the website associated with Complainant.
Complainant submits that Respondent is using copyrighted content on the website to which the disputed domain name resolves which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Xcentric Ventures, LLC v. Foundacion Private Whois, FA1441027 (Forum June 7, 2012) (finding that inclusion of similar content on respondent’s web page constituted an attempt by respondent to pass itself off as the complainant, which was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). Respondent then can use the fraudulent website to collect data from consumers who believe they are providing their information to CommScope, when in fact they are providing the information to Respondent. Such phishing activity is not a bona fide use of the disputed domain name and is not a legitimate noncommercial or fair use.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent had actual knowledge of Complainant’s rights in its COMMSCOPE mark prior to the registration of the disputed domain name.
Unlike the registration of a common name that may have more than one meaning, the COMMSCOPE mark is a coined term that only relates to Complainant. There would be no basis to register the mark as a domain name except for the express purpose of infringing Complainant’s rights.
Further, Respondent populated the website associated with the disputed domain name with the code and images from Complainant’s own site to operate a scheme to divert consumers to Respondent’s site to pass itself off as Complainant.
The evidence shows the Respondent had actual notice of Complainant’s trademark rights in and to the COMMSCOPE marks at the time the disputed domain name was registered. On that basis alone, Respondent’s registration of a confusingly similar domain name shows bad faith. Moreover, Respondent engaged in a pattern of such conduct when Respondent added the copyrighted content to its website.
Complainant adds that Respondent knew of Complainant’s rights and engaged in a pattern of conduct to prevent Complainant from using the disputed domain name. “[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., WIPO Case No. D2000-1221 (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).
Arguing that the disputed domain name has been used in bad faith, Complainant again refers to the screen capture of the landing page of the website to which the disputed domain name resolves which has been adduced in evidence in an annex to the Complaint, and submits that it shows that created a mirror website to attract Complainant’s customers, thereby confusing those customers.
Complainant adds that Respondent’s diversion of traffic from Complainant’s own website also shows bad faith pursuant to Policy ¶ 4(b)(iii). Complainant argues that by registering a domain name that contains the COMMSCOPE trademark, Respondent directly competes against Complainant for that traffic; traffic and the data collected from the traffic, in turn, is Respondent’s business; Respondent’s diversion of consumers away from Complainant’s websites increases the traffic to Respondent’s site, thereby increasing the value of the site because of the additional traffic; Respondent profits from the increased traffic who then provide their contact information and login information.
Complainant argues that its business is therefore harmed through Respondent’s diversion of traffic and submits that such use of the disputed domain name constitutes use in bad faith for the purposes of the Policy. Previous panels have defined “competitor” under Policy ¶ 4(b)(iii) as an entity who acts as a rival or opponent. See Mission KwaSizabantu v. Rost, WIPO Case No. D2000-0279 (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).
Complainant additionally argues that bad faith can also be inferred from Respondent’s choosing to use a designation that it knows to be similar to Complainant’s registered trademark in order to attract consumers to its website. G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Bad faith is shown because Respondent registered the disputed domain name to trade on Complainant’s goodwill associated with its COMMSCOPE mark and as long as Complainant maintains the disputed domain name, it has the ability to control the emails associated with the disputed domain name and the DNS settings – meaning at any time Respondent may send out phishing emails or redirect consumers to other websites. Neither Complainant nor its customers should bear that risk.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides a variety of communications services, in connection with which it uses the COMMSCOPE trademark and service mark and is the owner of numerous registrations for the mark including the following:
· United States registered trademark COMMSCOPE, registration number 1,865,198, registered on the Principal Register on November 29, 1994, for goods in international class 9;
· United States registered service mark COMMSCOPE ADVANTAGE INVENTORY MANAGEMENT, registration number 3,008,397, registered on the Principal Register on October 25, 2005, for services in international class 35;
· United States registered trademark and service mark COMMSCOPE, registration number 4,194,933, registered on the Principal Register on August 21, 2012, for goods and services in international class 6, 8,9, 37 and 42;
· United States registered trademark COMMSCOPE, registration number 4,463,018, registered on the Principal Register on January 7, 2014 for goods in international class 6;
· United States registered trademark COMMSCOPE, registration number 5,444,784, registered on the Principal Register on April 10, 2018 for goods in international class 6, 8, 9.
Complainant has an established Internet presence and social media presence; and maintains a website to which its domain name <commscope.com> resolves which was registered on April 10, 1994, resolves; and has a number of active social media accounts.
The disputed domain name <commscopetech.com> was registered on May 9, 2023, and resolves to a website that purports to be owned and maintained by Complainant, prominently displaying Complainant’s COMMSCOPE mark and with content in the English language that purports to impersonate Complainant.
The Registrar has confirmed that Chinese is the designated language in the Registration agreement and this Panel has determined, having regard to the circumstances described herein that English is the appropriate language of this proceeding and Respondent either understands English or has resources such that he can engage fully with this proceeding.
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 by the Forum for details of the registration of the disputed domain name in the course of this proceeding.
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.
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”).
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING.
The Rules provide:
“10. General Powers of the Panel
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Complainant requests the Panel to exercise his discretion and decide that notwithstanding that tge Registrar has confirmed that Chinese is the language of the registration agreement, that the proceedings should be conducted in English.
Citing previous panels referenced above, Complainant submits that where, as here, the disputed domain name has no meaning other than the English term associated with the domain name, the Panel may appropriately determine that the language of the proceeding shall be conducted in English.
Complainant adds that the website to which the disputed domain name resolves is in the English language and Respondent has chosen Cloudflare, based in San Francisco, California to provide a server for the website, and to do so conducts its business with Cloudflare in English, so therefore Respondent has sufficient knowledge to understand the English Language.
Further, because having to translate would unfairly burden Complainant.
Having regard to Rules rr. 10-11, and having considered the submissions of Complainant, this Panel agrees with Complainant, and finds that it is appropriate that this proceeding should be conducted in the English language as requested, notwithstanding that r.11(a) designates Chinese, being the language of the registration agreement, as the default language of the proceedings,
The reasons for the Panel’s decision are that the record shows that Respondent either understands and carries on its business in the English language or has at its disposal resources which permits it create, maintain and host an English language website; proceeding in English will not prejudice the Respondent, but proceeding in Chinese would impose a burden on Complainant; the website to which the disputed domain name resolves is in the English language and the disputed domain name is in Latin letters.
Furthermore, in reaching this decision this Panel is complying with his obligation under Rules r.19(c) to ensure that this proceeding takes place with expedition. If the proceeding were to be conducted in Chinese there would be unnecessary need to translate the documents on record and evidence into Chinese, and in particular the website to which the disputed domain name resolves which is in the English language.
Furthermore, this Panel in reaching this decision is giving effect to the obligation in Rules r.10(b) that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
Furthermore, this Panel is satisfied and finds that for the same reasons, Respondent has not been prejudiced by service of documents in this proceeding in the English language, and its failure to engage with this proceeding or to file any timely response is not due to any inability to understand the documents served to date.
Complainant has provided convincing, uncontested evidence that it has rights in the COMMSCOPE mark established by the ownership of the portfolio of trademark registrations described above.
Furthermore, the Complainant’s uncontested evidence is that Complainant has established a substantial protectable goodwill in the COMMSCOPE mark by using the mark in its communications business, including on the Internet and in social media.
The disputed domain name <commscopetech.com> consists of Complainant’s COMMSCOPE mark in its entirety in combination with the generic word “tech” and the gTLD extension <.com>.
Complainant’s COMMSCOPE mark is the initial, dominant and only distinctive element in the disputed domain name. The generic word “tech” does not add any distinguishing character and its presence in the disputed domain name does not prevent a finding of confusing similarity.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the COMMSCOPE mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent that it is not commonly known by the COMMSCOPE mark and has not received Complainant’s permission to use the COMMSCOPE mark;
· Complainant has not licensed its COMMSCOPE mark to Respondent;
· Complainant’s pre-existing rights to the trade name and mark COMMSCOPE pre-date the registration of the disputed domain name, going back to at least as early as 1969;
· COMMSCOPE mark is a coined term and has no meaning other than to designate Complainant’s own products and services;
· there would be no reason to use that mark other than to trade on Complainant’s goodwill and to use the disputed domain name to engage in a fraudulent scheme;
· The screen capture of the website to which the disputed domain name resolves which has been exhibited in the Complaint shows that Respondent is attempting to pass itself off as Complainant and endeavoring to trick consumers into believing that the website associated with Complainant;
· Respondent is using copyrighted content on the website to which the disputed domain name resolves which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
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).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the COMMSCOPE mark which predate the registration and first use of the disputed domain name on May 9, 2023,
It is most improbable that the disputed domain name which is composed of only the distinctive COMMSCOPE mark and the descriptive term “tech” in combination with the gTLD extension was chosen and registered without knowledge of Complainant, its mark, name and technology based business.
This Panel accepts Complainant’s submission that COMMSCOPE mark is a coined term and has no meaning other than to designate Complainant’s own products and services; and there would be no reason to use that mark other than to trade on Complainant’s goodwill.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind, with the intention of taking predatory advantage of Complainant’s reputation and goodwill in the COMMSCOPE mark.
The uncontested evidence adduced in the Complaint shows that the disputed domain name resolves to a website which is in the English language.
Complainant has made an unchallenged averment that the content of Respondent’s website contains images in which Complainant owns copyright.
While to the Panel’s eye, the website to which the disputed domain name resolves does not copy the look-and-feel of Complainant’s own website at <www.commscope.com> as alleged, it nonetheless purports to impersonate Complainant. The content of the website gives not indication that it is not associated with Complainant, but instead it prominently display’s Complainant’s registered COMMSCOPE trademark, including the ® legend, with test that infers that Respondent is in fact Complainant. Such passing off constitutes use of the disputed domain name in bad faith.
Finally, for completeness, it should be stated that there is no indication in the record that Respondent may engage in phishing or has engaged a “fraudulent scheme” as suggested. Such very serious allegations are unhelpful if made as mere assertions and should not really be made without facts to support them. The exhibited screen capture of the website to which the disputed domain name resolved consisted only of the landing page. If there were additional pages which inferred interactivity or an invitation to Internet users to engage with Respondent an allegation of phishing or a fraudulent scheme might be inferred. However, in this proceeding, Complainant has made out a strong uncontested case, without the need for unsupported assertions.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <commscopetech.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 19, 2023
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