Procore Technologies, Inc. v. JSW Asset / JSW Asset Co., Ltd
Claim Number: FA2004001894026
Complainant is Procore Technologies, Inc. (“Complainant”), represented by Thomas J. Speiss, III of Buchalter, California, USA. Respondent is JSW Asset / JSW Asset Co., Ltd (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <procorethailand.com>, registered with Name.com, Inc.
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 April 28, 2020; the Forum received payment on April 28, 2020.
On April 28, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <procorethailand.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 May 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@procorethailand.com. Also on May 4, 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 June 1, 2020, 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a US construction project management software company.
Complainant holds a registration for the PROCORE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,473,444, registered May 22, 2018).
Respondent registered the domain name <procorethailand.com> on September 3, 2018.
The domain name is confusingly similar to Complainant’s PROCORE mark.
Respondent is not licensed or otherwise authorized to use Complainant’s PROCORE mark.
Respondent has not been commonly known by the domain name.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to pass itself off as Complainant online in order to divert Internet users to a website that offers for sale the same services as does Complainant, and that Respondent profits from this use of the domain name.
As of April 28, 2020, Respondent uses the domain name to display third-party click-through hyperlinks to various websites related to Complainant, from the operation of which links Respondent likewise profits.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered the domain name in order to prevent Complainant from reflecting the PROCORE mark in a corresponding domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the PROCORE service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s standing to pursue a complaint under the Policy).
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 Thailand). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 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 <procorethailand.com> domain name is confusingly similar to Complainant’s PROCORE service mark. The domain name incorporates the mark in its entirety, merely adding the geographic descriptor “thailand” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Ushio Inc. v. Domain Admin / Whois Privacy Corp., FA 1863888 (Forum November 4, 2019) (finding that the addition of a geographic designation and a gTLD to the mark of another in creating a domain name were not sufficient to distinguish one from the other for purposes of Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <procorethailand.com> 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 (Forum August 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 (Forum September 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <procorethailand.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the PROCORE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “JSW Asset / JSW Asset Co., Ltd,” 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). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <procorethailand.com> domain name to pass itself off as Complainant online in order to divert Internet users to a website that offers for sale the same services as does Complainant, and that Respondent profits from this use of the domain name. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018):
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 … [in that] … Respondent is apparently using the disputed domain name to offer for sale competing services.
See also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum September 14, 2006) (finding that a respondent’s use of a UDRP complainant’s mark in a confusingly similar domain name to redirect Internet users to that respondent’s own website for its commercial gain dis not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant further alleges that, as of April 28, 2020, Respondent also (or instead) uses the domain name to display third-party click-through hyperlinks to various websites related to Complainant, from the operation of which links Respondent likewise profits.
This substituted or additional employment is also neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to [a website offering for sale] products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <procorethailand.com> domain name to compete with Complainant online disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum January 9, 2018) (finding that a respondent’s use of a disputed domain name to offer loan services competing with those of a UDRP complainant disrupted that complainant’s business, and therefore demonstrated bad faith in the registration and use of the domain name within the meaning of Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent’s employment of the <procorethailand.com> domain name, which we have found to be confusingly similar to Complainant’s PROCORE service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this further illustrates Respondent’s bad faith in the registration and use of the domain name. See, for example, CAN Financial Corporation v. William Thomson / CNA Insurance, FA1541484 (Forum February 28, 2014) (finding that a respondent had engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by using a domain name that was confusingly similar to the mark of a UDRP complainant to attract Internet users to its own website where it sold competing insurance services).
Finally, under this head of the Policy, we conclude from a review of the record that Respondent’s recent employment of the <procorethailand.com> domain name to resolve to a website displaying hyperlinks to third-party websites related to Complainant’s business, and that Respondent has adopted this use of the domain name for its profit, comes within the terms of both Policy ¶ 4(b)(iii) and ¶ 4(b)(iv) for the same essential reasons as are noted above for its earliest use of the domain name. See, for example, Transamerica Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum August 20, 2018):
Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <procorethailand.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 8, 2020
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