CommScope, Inc. of North Carolina v. Brent Sterling
Claim Number: FA2011001920381
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, Minnesota, USA. Respondent is Brent Sterling (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscope.xyz>, registered with NameCheap, Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2020; the Forum received payment on November 12, 2020.
On November 12, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <commscope.xyz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@commscope.xyz. Also on November 12, 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 December 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant creates the infrastructure that connects people and technologies, including wired and wireless networks. Complainant has rights in the COMMSCOPE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,865,198, registered November 29, 1994).
2. Respondent’s <commscope.xyz>[i] is identical or confusingly similar to Complainant’s COMMSCOPE mark as it merely adds the top level domain (“TLD”) “.xyz.”
3. Respondent lacks rights or legitimate interests in the <commscope.xyz> domain name. Respondent is not commonly known by the domain name and has not received Complainant’s permission to use the COMMSCOPE mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent has not placed any content on the resolving website.
4. Respondent registered and uses the <commscope.xyz> domain name in bad faith. Respondent intentionally attempts to divert traffic from Complainant’s own website to Respondent’s website.
5. Respondent also fails to make active use of the domain name.
6. Additionally, Respondent had actual knowledge of Complainant’s rights to the COMMSCOPE mark prior to registering the <commscope.xyz> domain name given that the mark is a coined term that only relates to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COMMSCOPE mark. Respondent’s domain name is confusingly similar to Complainant’s COMMSCOPE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <commscope.xyz> domain name and that Respondent registered and uses the domain name 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:
(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 has rights in the COMMSCOPE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,865,198, registered November 29, 1994). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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, Complainant has demonstrated rights in the COMMSCOPE mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <commscope.xyz> is identical or confusingly similar to Complainant’s COMMSCOPE mark as it merely adds the top level domain “.xyz.” The addition of a top level domain fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”). Therefore, the <commscope.xyz> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <commscope.xyz> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <commscope.xyz> domain name as Respondent is not commonly known by the domain name and has not received Complainant’s permission to use the COMMSCOPE mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information for the <commscope.xyz> domain name lists the registrant as “Brent Sterling,” and there is no other evidence in the record to suggest that Respondent was authorized to use the COMMSCOPE mark. Therefore, the Panel holds that Respondent is not commonly known by the <commscope.xyz> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <commscope.xyz> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has not placed any content on the resolving website. Failing to make active use of a domain name incorporating the mark of another is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was 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)). Complainant has provided evidence that Respondent failed to place any content on the website associated with the <commscope.xyz> domain name. Therefore, the Panel holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <commscope.xyz> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <commscope.xyz> domain name in bad faith as Respondent intentionally attempts to divert traffic from Complainant’s website to Respondent’s own website. Using a confusingly similar domain name to divert internet traffic can show bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).); see also Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant provides screenshots of Respondent’s resolving website that lacks content. Complainant also argues that Respondent’s intent to divert internet traffic is clear because there is no other meaning to the word COMMSCOPE other than Complainant’s brand, and the <commscope.xyz> domain name differs from Complainant’s own domain name only by the top level domain. Therefore, the Panel agrees that Respondent registered and uses the <commscope.xyz> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends Respondent registered and uses the <commscope.xyz> domain name in bad faith as Respondent fails to make active use of the domain name. Failing to make active use of a domain name incorporating the mark of another can evidence bad faith per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Here, the Panel is reminded that Complainant provides screenshots of Respondent’s resolving website that lacks content. The Panel agrees this is a further reason to hold that Respondent registered and uses the <commscope.xyz> domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent registered the <commscope.xyz> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the COMMSCOPE mark prior to registration of the domain name given that the mark is a coined term that only relates to Complainant. A respondent’s use of a mark in a confusingly similar domain name can show actual knowledge of a complainant’s rights to the mark and show bad faith. 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.”). Complainant argues that Respondent had actual knowledge of Complainant’s trademark rights in its COMMSCOPE mark prior to the registration of the <commscope.xyz> domain name because the COMMSCOPE mark is a coined term that only relates to Complainant. Because the Panel agrees, the Panel holds that Respondent registered the <commscope.xyz> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <commscope.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 14, 2020
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