Rosendin Electric, Inc. v. Nguyễn Văn Lư
Claim Number: FA2007001906026
Complainant is Rosendin Electric, Inc. (“Complainant”), represented by Lindsay Hulley of Rutan & Tucker LLP, California. Respondent is Nguyễn Văn Lư (“Respondent”), Việt Nam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rosendinelectric.com>, registered with April Sea Information Technology Company Limited.
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 July 27, 2020; the Forum received payment on July 27, 2020.
On July 30, 2020, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <rosendinelectric.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 July 31, 2020, the Forum served the Complaint and all Annexes, including a Vietnamese Language Written Notice of the Complaint, setting a deadline of August 20, 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@rosendinelectric.com. Also on July 31, 2020, the Vietnamese 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2020, 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.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Complainant did not submit a complaint in Vietnamese, but requests the language of the proceedings be in English, because Respondent can be assumed to be conversant in English for multiple reasons, include that the disputed domain name is in English, conducting the proceedings in a different language would cause Complainant to incur significantly more time and monetary costs, the domain name is based on an English language name, the website features English and Vietnamese languages, and previous Panels have conducted similar proceedings against the same Respondent in English. As it agrees, and having reviewed the applicable rules on language of the proceedings under the UDRP, the Panel finds as follows:
“Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English language Complaint and English and Vietnamese Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.”
A. Complainant
Complainant made the following contentions.
Complainant is a large electrical contractor based in the United States. Complainant asserts rights in the ROSENDIN and ROSENDIN ELECTRIC marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). (e.g. ROSENDIN, Reg. 5,707,561, registered Mar. 26, 2019; ROSENDIN ELECTRIC, Reg. 5,707,366, registered Mar. 26, 2019). See Compl. Annex I. Complainant also asserts common law rights in the marks that predate Respondent’s registration of the disputed domain name. Respondent’s <rosendinelectric.com> domain name is identical to Respondent’s marks as it incoporates them entirely, removes their spaces, and adds the “.com” generic top-level domain (“gTLD”) to the end of the mark.
Respondent lacks rights in the <rosendinelectric.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its marks in the domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent holds the disputed domain name for the purpose of diverting internet users seeking Complainant’s website and reidrecting them to an inactive website, where third party ads are hosted by the domain registrar, and the Respondent profits off of data gathered from a file downloaded before entering the website.
Respondent registered and uses the <rosendinelectric.com> domain name in bad faith. Respondent has a demonstrated pattern of bad faith registration of domain names. Respondent attempts to divert internet users seeking Complainant’s website to the disputed domain name’s resolving website, which is inactively held and features data and third party links that the registrar and Respondent preumably profit from. Respondent also registered and renewed the disputed domain name with actual knowledge of Complainant’s rights in the ROSENDIN and ROSENDIN ELECTRIC marks, and did so opportunistically.
B. Respondent
Respondent failed to submit a Response in 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”).
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 ROSENDIN and ROSENDIN ELECTRIC marks through its registration of the marks with the USPTO. (e.g. ROSENDIN, Reg. 5,707,561, registered Mar. 26, 2019; ROSENDIN ELECTRIC, Reg. 5,707,366, registered Mar. 26, 2019). See Compl. Annex I. Registration with the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant also submits that it holds common law rights in the ROSENDIN and ROSENDIN ELECTRIC marks. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides various sources, such as its Wikipedia page, business registration, and the WHOIS information for its official websites. See Compl. Annexes D through F. Complainant argues these sources demonstrate longstanding use of the marks since 1919, as well as widespread recognition of its marks. The Panel therefore finds that Complainant does hold common law rights in the ROSENDIN and ROSENDIN ELECTRIC marks for the purposes of Policy ¶ 4(a)(i) and has held them for many years prior to the registration of the disputed domain name.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ROSENDIN or ROSENDIN ELECTRIC marks. Complainant argues that Respondent’s <rosendinelectric.com> domain name is identical or confusingly similar to its ROSENDIN and ROSENDIN ELECTRIC marks, as it incorporates the marks in their entirety and only adds the “.com” gTLD. Under Policy ¶ 4(a)(i), a domain name is generally considered identical to a mark it wholly incorporates, while the removal of spaces and addition of a gTLD are generally irrelevant to a differentiation analysis, as they are required in domain names. See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”). The disputed domain name incorporates Complainant’s ROSENDIN ELECTRIC mark entirely, and only removes the spaces and adds the “.com” gTLD to the end of the mark, Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s ROSENDIN ELECTRIC mark under 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”).
(a) Respondent has chosen to take Complainant’s ROSENDIN ELECTRIC trademark and to use it in its domain name in its entirety;
(b) Respondent registered the <rosendinelectric.com> domain name on March 3, 2006;
(c) Respondent holds the disputed domain name for the purpose of diverting internet users seeking Complainant’s website and redrecting them to an inactive website, where third party ads are hosted by the domain registrar, and the Respondent profits off of data gathered from a file downloaded before entering the website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights or legitimate interests in the <rosendinelectric.com> domain name, as Respondent is not commonly known by this name, and Complainant has not authorized or licensed Respondent to use its ROSENDIN or ROSENDIN ELECTRIC marks in its domain name. Where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, a lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS of record identifies Respondent as “Nguyễn Văn Lư “. See Compl. Annex A; see also Registrar Verification Email. Also, nothing in the record rebuts Complainant’s submission that Respondent is not authorized to use Complainant’s marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <rosendinelectric.com> for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Rather, Respondent attempts to divert internet users seeking Complainant’s website to the dispute domain name’s resolving website, which is inactively held and features third party links and advertisements for competing services provided by the domain registrar. Under Policy ¶¶ 4(c)(i) or (iii), using an identical or confusingly similar domain name to divert internet users from complainant’s site to a disputed domain where pay-per-click advertisements are hosted by a respondent or another party, is generally not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Additionally, inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent actively 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).”). Complainant provides screenshots of the disputed domain name’s resolving website, which resolves to an inactively held page with competing third party advertisements hosted by the registrar. See Compl. Annex H. The resolving website also requires visitors to the site to accept a downloaded file which Complainant argues is used to track user behavior and notify the user of potential “interests”. See Compl. Annex. G. Complainant argues that Respondent likely profits from this data collection. As the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
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 has engaged in a history of bad faith registration. Under Policy ¶ 4(b)(ii), bad faith registration may be found where a respondent has had multiple domain names successfully transferred from it. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant provides citations for five different cases allegedly against the same Respondent here, where the domain names at issue were transferred to the complainants. See Mediacom Communications Corporation v. Nguyễn Văn Lư, FA 2001001877618 (Forum Feb 29, 2020); BEENVERIFIED, INC. v. Nguyễn Văn Lư FA2002001885675 (Forum Apr. 5, 2020); ThiFactorySA v. Nguyễn Văn Lư D2019-2596 (WIPO Dec. 26, 2019); Squarespece, Inc. v. Nguyễn Văn Lư D2019-3064 (WIPO Feb. 26, 2020); and Skyscanner Limited v. Nguyễn Văn Lư D2020-0672 (WIPO May 15, 2020). Therefore, the Panel finds Respondent has engaged in a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered and uses the <rosendinelectric.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. Hosting an identical or confusingly similar domain name to divert internet users from complainant’s services to a resolving website that features hyperlinks competing with complainant is generally considered a bad faith use under Policy ¶¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). The Panel recalls Complainant’s screenshots of the resolving website, with competing hyperlinks from the registrar, and a page requiring the page visitor to download an alleged tracking and notification file. See Compl. Annexes G and H. Complainant argues that Respondent profits from either these links and/or the data gained from the file download. As the Panel agrees, it finds Respondent registered and uses the <rosendinelectric.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the ROSENDIN and ROSENDIN ELECTRIC marks when it registered the <rosendinelectric.com> domain name. Complainant argues that Respondent’s use of a domain name identical to its marks, marks which are not common (Complainant is aware of no other entity known as ROSENDIN ELECTRIC) indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Use of a unique and widely known mark in a disputed domain name to offer competing services may be evidence of actual knowledge under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant argues that its ROSENDIN ELECTRIC is an uncommon mark and so obviously connected to Complainant that the only possibility is that Respondent had actual knowledge of Complainant’s rights and use of the mark when it registered the disputed domain name. As the Panel agrees, it finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent is using the <rosendinelectric.com> domain name in bad faith by inactively holding the disputed domain name’s resolving website. Inactively holding a disputed domain name’s resolving website is considered a bad faith use under Policy ¶ 4(a)(iii). See Regions Bank v. Darla Atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which features not content but third party advertisements provided by the domain name registrar. See Compl. Annex H. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent registered the <rosendinelectric.com> domain name with opportunistic bad faith, and renewed the disputed domain name in bad faith. Opportunistic bad faith may be demonstrated under Policy ¶ 4(a)(iii) where a Respondent registers a domain name based on a complainant’s mark before the complainant is able to do so. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Bad faith renewal of domain name may be demonstrated under Policy ¶ 4(a)(iii) where a respondent renews the registration of a domain name with actual knowledge of a complainant’s rights in a mark the domain name incorporates. See Houlberg Dev. v. Adnet Int’l, FA 95698 (Forum Oct. 27, 2000) (holding that as the respondent had actual knowledge of the complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith). Complainant argues that given the widespread notoriety and unique mark, Respondent registered the disputed domain name to prevent Complainant from doing so, and renewed the domain name with actual knowledge of Complainant’s rights in the ROSENDIN and ROSENDIN ELECTRIC marks. As the Panel agrees, it finds Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).
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 <rosendinelectric.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 27, 2020
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