Cisco Technology, Inc. v. BY / Raymond Wang
Claim Number: FA2011001923254
Complainant is Cisco Technology, Inc. ("Complainant"), represented by Sharon R. Smith of Morgan, Lewis & Bockius LLP, California, USA. Respondent is BY / Raymond Wang ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ciscobraindump.com>, registered with NameSilo, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2020; the Forum received payment on November 30, 2020.
On December 1, 2020, NameSilo, LLC confirmed by email to the Forum that the <ciscobraindump.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@ciscobraindump.com. Also on December 8, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 January 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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, together with its licensees, offers computer software, hardware, telephony, and networking products and services, for which it has used the CISCO mark since at least as early as 1984, and for much of that time has offered workbooks, instructional seminars, workshops, and secure testing services under the mark. Complainant asserts common law rights in the CISCO mark, and owns longstanding trademark registrations for CISCO in the United States and other jurisdictions.
The disputed domain name <ciscobraindump.com> was registered in April 2016. Respondent is the current registrant of the domain name; it was registered in the name of a privacy registration service prior to the initiation of this proceeding. Complainant states that the term "brain dump" refers to transferring knowledge or information, and is commonly used in the context of preparation for computer-related certification exams such as those offered by Complainant. The domain name is being used for a website that promotes the sale of digital exam workbooks bearing the CISCO mark and includes numerous instances of CISCO and other marks owned by Complainant (e.g., "PassLeader New Cisco Exam Dumps — CCNA, CCNP, CCIE, DevNet, CCDE Certification Exam Dumps VCE and PDF and Braindumps and Practice Tests."). Complainant states that the products and services promoted on Respondent's website are similar to or directly competitive with those offered by Complainant, and that they infringe Complainant's copyrights in its exam questions. Complainant states further that Respondent is not affiliated with or sponsored or endorsed by Complainant and is not authorized to resell or promote Complainant's products or services nor to use its CISCO mark.
Complainant contends on the above grounds that the disputed domain name <ciscobraindump.com> is confusingly similar to its CISCO mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <ciscobraindump.com> incorporates Complainant's registered CISCO trademark, adding the generic or descriptive term "brain dump" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Cisco Technology, Inc. v. Bruce Lee, HK-1801061 (ADNDRC Feb. 26, 2018) (finding <ciscoprice.com> confusingly similar to CISCO); Hewlett-Packard Development Co., L.P. & Hewlett-Packard Co. v. Charlie Lu, FA 1359511 (Forum Dec. 22, 2010) (finding <hp-braindumps.com> confusingly similar to HP). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that promotes products and services that compete with those offered by Complainant, and that uses Complainant's CISCO and other marks to what appears to be a far greater extent than necessary to describe those products and services (and without a disclaimer), likely precluding a claim of nominative fair use. See, e.g., IMDB.COM, INC. v. Salman Yousuf, FA 1839189 (Forum May 13, 2019) (claim of nominative fair use is precluded by unauthorized use of mark to greater extent than necessary to describe services being offered); Xerox Corp. v. All Fath / Software, FA 1791221 (Forum July 19, 2018) ("A respondent acquires rights or legitimate interests by such use only if it needs to use the mark to describe its goods or services, uses no more of the mark than necessary, and does not falsely suggest sponsorship or endorsement by the mark owner."); American Council on Education & GED Testing Service LLC v. Robel Getaneh, FA 1761719 (Forum Jan. 31, 2018) (finding lack of rights or interests arising from use of mark in domain name and throughout website promoting test preparation materials, where site contained only an inconspicuous disclaimer).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's registered mark, and is using it to infringe Complainant's copyrights and promote competing products or services in a misleading manner. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., IMDB.COM, INC. v. Salman Yousuf, supra (finding bad faith where domain name was registered using privacy registration service and was used to promote competing services in confusing manner); Hewlett-Packard Development Co., L.P. & Hewlett-Packard Co. v. Charlie Lu, supra (finding bad faith where domain name incorporating mark was used to promote competing exam preparation materials). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ciscobraindump.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 5, 2021
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