Marvell International Ltd. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2004001893552
Complainant is Marvell International Ltd. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marvellbenefit.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2020; the Forum received payment on April 24, 2020.
On April 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marvellbenefit.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 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2020 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@marvellbenefit.com. Also on April 29, 2020, 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 May 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
On May 25, 2020, the Panel made an Order for Additional Submission, setting a deadline of May 29, 2020, requesting the Complainant to complete the Complaint with a set of copies of Certificates of Registration of those trademarks that the Complainant chose to refer to as proof of prior rights.
On May 29, 2020, the Complainant responded, providing the requested set of copies of Certificates of Trademark Registrations.
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
The Complainant operates in the business of computer hardware and software products. Complainant has rights in the MARVELL trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,474,135, registered July 31, 2001). Respondent’s domain name <marvellbenefit.com> is nearly identical and confusingly similar to Complainant’s MARVELL trademark since it incorporates the entirety of the trademark, adding only the descriptive term “benefit” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <marvellbenefit.com> domain name because Respondent is not commonly known or referred to by the disputed domain name and is not authorized or permitted to use Complainant’s MARVELL trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent passively holds the disputed domain name. In addition, Respondent hosts parked advertisements related to Complainant’s business.
Respondent registered and uses the <marvellbenefit.com> domain name in bad faith. Respondent offers the disputed domain name for sale. Respondent also has engaged in a previous pattern of bad faith registration and use. Additionally, Respondent attempts to divert customers to its own website for commercial gain. Finally, Respondent had actual knowledge of Complainant’s rights in the MARVELL trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of national and regional trademark registrations, for example:
Chinese National Trademark registration No. 6596973 MARVELL (word), registered June 21, 2010 for goods in class 9;
Chinese National Trademark registration No. 23888617 MARVELL (word), registered September 7, 2018 for goods in class 9;
Chinese National Trademark registration No. 23888616 MARVELL (word), registered May 7, 2018 for services in class 38;
Chinese National Trademark registration No. 23888615 MARVELL (word), registered September 14, 2018 for services in class 42;
European Union Trade Mark registration No. 018131199 MARVELL (word), registered February 7, 2020 for goods and services in classes 9, 38 and 42;
Hong Kong National Trademark registration No 300805617 MARVELL (word), registered January 29, 2007 for goods in Class 9;
Norwegian National Trademark registration No. 306490 MARVELL (word), registered October 24, 2019 for goods and services in classes 9, 38 and 42; Singapore National Trademark registration No. T0006443G MARVELL (word), registered July 18, 2002 for goods in class 9;
Singapore National Trademark registration No. T07/02568B MARVELL (word), registered February 6, 2007 for goods in class 9;
Turkish National Trademark registration No. 2018 120209 MARVELL (word), registered October 7, 2019 for goods and services in classes 9, 38 and 42;
United Kingdom National Trademark registration No. UK00003433178 MARVELL (word), registered January 24, 2020 for goods and services in classes 9, 38 and 42;
United States National Trademark registration No. 2,665,299 MARVEL (word), registered December 24, 2002 for goods in class 9;
United States National Trademark registration No. 2,474,135 MARVEL (word), registered July 31, 2001 for goods in class 9;
United States National Trademark registration No. 3,656,331 MARVEL (word), registered July 21, 2009 for goods in class 9;
United States National Trademark registration No. 2,735,413 MARVEL (word), registered July 8, 2003 for goods and services in classes 9 and 42; and
Canadian National Trademark registration No. TMA603,681 MARVEL (word), registered March 1, 2004.
The Complainant is also the owner of a number of national trademark registrations for combined trademarks, where MARVEL is the initial part of the trademark.
The disputed domain name was registered on July 22, 2019
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”).
Complainant claims rights in the MARVELL trademark based upon a number of national registrations around the world, including with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant claims to have registered the MARVELL mark with the USPTO (e.g., Reg. No. 2,474,135, registered July 31, 2001). Therefore, the Panel finds that the Complainant has rights in the trademark under Policy ¶ 4(a)(i).
According to the Complainant, the Respondent’s <marvellbenefit.com> domain name is confusingly similar to Complainant’s MARVELL trademark since it incorporates the entirety of the trademark, adding only the descriptive term “benefit” and the “.com” gTLD. Addition of a generic or descriptive term and a gTLD to a trademark is insufficient to overcome confusing similarity between a domain name and a trademark under Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). In this case the added part “benefit” only indicates that the surfer reaching the domain name and corresponding web site expects to find some benefits related to the complainant and the trademark MARVEL. Thus, the Panel agree with Complainant and find that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent does not have rights or legitimate interests in the <marvellbenefit.com> domain name because Respondent is not commonly known to or referred to by the disputed domain name and is not authorized or permitted to use Complainant’s MARVELL trademark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s trademark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). In the present case, the WHOIS information of record lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico,” and Complainant contends that it did not authorize Respondent’s use of the MARVELL trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use <marvellbenefit.com> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent passively holds the disputed domain name. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant claims that Respondent’s use of the disputed domain name to host links qualifies as an inactive holding of the domain. Complainant has provided the Panel with screenshots of the links that appear of Respondent’s resolving webpage. The Panel agrees with the Complainant’s conclusion and finds that Respondent’s use of the domain name interests in the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
In addition, Complainant claims that Respondent’s use of the <marvellbenefit.com> domain name to host parked advertisements related to Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Use of a disputed domain name for a parked page with advertisements is generally not considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As said, Complainant provides a screenshot of the page of hyperlinks at the disputed domain and claims that they are related to Complainant’s business because they deal with employee health insurance and benefits. Therefore, the Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <marvellbenefit.com> domain name in bad faith since Respondent offers the disputed domain name for sale. An offer to sell a disputed domain name for a price higher than the costs associated with registration may evidence bad faith under Policy ¶ 4(b)(i). See l Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides a screenshot of the disputed domain and points out a link to buy the domain located on the webpage. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(i).
Complainant also argues that Respondent has engaged in a previous pattern of bad faith registration and use. Previous negative UDRP decisions against a respondent may establish bad faith per Policy ¶ 4(b)(ii). See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). Complainant provides a list of 91 Forum decisions against Respondent. Thus, the Panel agrees with Complainant and find bad faith registration and use under Policy ¶ 4(b)(ii).
Additionally, Complainant claims that the Respondent registered and uses the <marvellbenefit.com> domain name in bad faith since Respondent attempts to divert Internet users to its own website for commercial gain. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). As previously noted, Complainant provides screenshots of the webpage resolving at the disputed domain. Complainant additionally notes that the links present on Respondent’s webpage relate to employee benefits and claims that they are designed to target and profit from Complainant’s employees. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent had constructive and actual knowledge of Complainant’s rights in the MARVELL trademark. While constructive notice is insufficient, evidence of actual knowledge of a Complainant’s rights in a trademark may support a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that Respondent almost certainly had actual knowledge of Complainant’s rights in the MARVELL trademark given the success of Complainant’s brand. Referring to all facts and circumstances in this case, the Panel agrees that actual knowledge exists, and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 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 <marvellbenefit.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 30, 2020
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