ATEN International Co., Ltd. v. ATEN Asia
Claim Number: FA1903001836205
Complainant is ATEN International Co., Ltd. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, USA. Respondent is ATEN Asia (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aten-asia.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2019; the Forum received payment on March 27, 2019.
On March 28, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <aten-asia.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 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@aten-asia.com. Also on April 2, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. 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.
A. Complainant
Complainant made the following contentions.
Complainant, ATEN International Co., uses their mark ATEN in connection with computer connectivity and management solutions. Complainant has rights in the ATEN mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,610,445, registered Aug. 21, 1990). See Compl. Ex. 7. Respondent’s <aten-asia.com> domain name is confusingly similar to Complainant’s ATEN mark, as it incorporates the mark in its entirety, merely adding a hyphen, the geographically descriptive term “asia”, and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the <aten-asia.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ATEN mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to send emails that impersonate Complainant to defraud Complainant and/or its customers. Further, Respondent uses the disputed domain name to redirect users to Complainant’s website.
Respondent registered and is using the <aten-asia.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is using the disputed domain name to disrupt Complainant’s business by using an email account associated with the disputed domain name to impersonate Complainant in furtherance of a fraudulent phishing scheme. Respondent’s bad faith is also demonstrated by its use of the disputed domain name to redirect to Complainant’s own website. Respondent also registered the disputed domain name with false contact information. Additionally, Respondent had actual knowledge of Complainant’s rights in the ATEN mark prior to registering the disputed domain name.
B. Respondent
Respondent did not file a Response in this proceeding.
1. Complainant is a Taiwan company engaged in computer connectivity and management solutions.
2. Complainant has established its trademark rights in the ATEN mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,610,445, registered Aug. 21, 1990).
3. Respondent registered the disputed domain name on December 14, 2018.
4. Respondent is using the disputed domain name to send emails that impersonate Complainant with the intention to defraud Complainant and/or its customers. Respondent also uses the disputed domain name to redirect internet users to Complainant’s website.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ATEN mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,610,445, registered Aug. 21, 1990). See Compl. Ex. 7. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the ATEN mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ATEN mark. Complainant argues that the <aten-asia.com> domain name is confusingly similar to the ATEN mark, as it incorporates the mark in its entirety, merely adding a hyphen, the geographically descriptive term “asia”, and the gTLD “.com”. The addition of hyphens, geographically descriptive terms, and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Here, Respondent added a hyphen, the geographically descriptive term “asia”, and the gTLD “.com” to Complainant’s mark when registering the disputed domain name. See Amend. Compl. Ex. 2. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s ATEN mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ATEN trademark and to use it in its domain name, adding the geographically descriptive term “asia” that does not negate the confusing similarity with Complainant’s trademark that is present;
(b) Respondent registered the disputed domain name on December 14, 2018;
(c) Respondent is using the disputed domain name to send emails that impersonate Complainant with the intention to defraud Complainant and/or its customers. Respondent also uses the disputed domain name to redirect users to Complainant’s website.
(d) Respondent has engaged in these activities without the consent or approval of Complainant.
(e) Complainant argues that Respondent has no rights or legitimate interests in the <aten-asia.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ATEN mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). The WHOIS information of record identifies the owner of the disputed domain name as “ATEN Asia” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. See Amend. Compl. Ex. 2. The Panel also notes that although the WHOIS information infers that Respondent may be commonly known by the disputed domain name, it failed to provide any affirmative evidence to support that conclusion. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <aten-asia.com> domain name;
(f) Complainant further argues that Respondent’s lack of rights and legitimate interests in the <aten-asia.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the domain name resolves to a website which is being used to send emails that impersonate Complainant and with the intention to defraud Complainant and/or its customers. Use of a domain name to pass itself off as a complainant by sending emails to further fraudulent activities is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides evidence of the emails sent by Respondent using the disputed domain name to support this contention. See Compl. Ex. 9. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <aten-asia.com> domain name per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits that Respondent is using the <aten-asia.com> domain name to redirect users to Complainant’s own website. Use of a disputed domain name to redirect users to a complainant’s official website is not a use indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Here, the <aten-asia.com> domain name redirects to Complainant’s own website. See Compl. Ex.10. The Panel finds that Respondent does not have rights or legitimate interests in the <aten-asia.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s bad faith is indicated by its use of the <aten-asia.com> domain name to disrupt Complainant’s business by using an email account associated with the disputed domain name to impersonate Complainant in furtherance of a fraudulent phishing scheme. Use of a disputed domain name to pass off as a complainant in furtherance of a fraudulent phishing scheme may demonstrate bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant provides emails used in Respondent’s phishing scheme to support this contention. See Compl. Ex. 9. The Panel finds that Respondent is using the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant submits that Respondent is using the disputed domain name to redirect to Complainant’s own website. Redirection of a disputed domain name to a complainant’s own website may demonstrate bad faith per Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides a screenshot of the page to which the disputed domain name resolves. See Compl. Ex. 10. The Panel finds that Respondent is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the ATEN mark prior to registering the disputed domain name. A respondent’s actual knowledge of complainant’s rights in a mark prior to registering a disputed domain name may demonstrate bad faith per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant claims that Respondent’s passing off as Complainant may demonstrate actual knowledge of Complainant’s rights in the ATEN mark. See Compl. Ex. 9. The Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ATEN mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aten-asia.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 29, 2019
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