Trimble Inc. v. Zhangming Li
Claim Number: FA2104001941544
Complainant is Trimble Inc. ("Complainant"), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is Zhangming Li ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trimbleus.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2021; the Forum received payment on April 14, 2021.
On April 15, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <trimbleus.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 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2021 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@trimbleus.com. Also on April 16, 2021, 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 May 11, 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 has produced positional/navigational equipment and related products and services under the TRIMBLE trademark since 1980. Complainant has offices in more than forty countries and annual revenues exceeding $3 billion. Complainant owns longstanding trademark registrations for TRIMBLE and related marks in the United States and other jurisdictions worldwide, and asserts that the mark enjoys widespread consumer recognition.
Respondent registered the disputed domain name <trimbleus.com> in March 2021. Complainant states that the domain name was used to proxy or mirror Complainant's website in order to impersonate Complainant, and that since Complainant began blocking Respondent's IP address, the domain name now displays a "proxy error" message. Complainant states that Respondent is not commonly known by the domain name, has never been associated with or affiliated with Complainant, and has not been authorized to use its mark or any variation thereof.
Complainant contends on the above grounds that the disputed domain name <trimbleus.com> is confusingly similar to its TRIMBLE 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 <trimbleus.com> incorporates Complainant's registered TRIMBLE trademark, adding the geographic abbreviation "us" 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., BOLLORE SE v. Stanley Block, No. 103568 (Czech Arb. Ct. Mar. 12, 2021) (finding <bolloreus.com> confusingly similar to BOLLORE); Micro Electronics, Inc. v Jayasingha Jayasingha / ECL IT Solutions, FA 1921448 (Forum Dec. 17, 2020) (finding <microcenterus.com> confusingly similar to MICRO CENTER); Trimble Navigation Ltd. v. Davide Erba, D2009-0881 (WIPO Aug. 25, 2009) (finding <trimblesurveying.com> confusingly similar to TRIMBLE). 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 its sole apparent use has been to proxy or mirror Complainant's website, allegedly to impersonate Complainant. Such conduct does not give rise to rights or legitimate interests under the Policy. See, e.g., Beauty Holding, LLC v. Benjamin Wilde, FA 1925183 (Forum Jan. 18, 2021) (finding lack of rights or interests where domain names were used for websites mimicking complainant's website); Walmart Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1909146 (Forum Sept. 27, 2020) (finding lack of rights or interests where domain name was used to redirect users to complainant's website); Quality Nonsense Ltd. v. Jerry Sandusky, FA 1668646 (Forum May 5, 2016) (finding lack of rights or interests where domain name was used to embed and mirror complainant's website).
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)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), 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."
These instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See, e.g., Walmart Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, supra.
In this case, it appears likely to the Panel that Respondent registered the domain name for purposes other than merely mirroring Complainant's own website, and that Respondent is using or intends to use the domain name for improper purposes, such as including offering it for sale to Complainant or a competitor, disrupting the business of Complainant or a competitor, or attracting users to a website or other online location by creating a likelihood of confusion with Complainant's mark. See, e.g., id. The Panel also notes that Respondent has been found in at least two previous proceedings to have registered and used domain names in bad faith. See LEGO Juris A/S v. Zhangming Li, D2020-2350 (WIPO Oct. 26, 2020) (ordering transfer of <lego-nvzhuang.com>, which was being used to feature explicit adult content and link to gambling websites); Philipp Plein v. Zhangming Li, D2017-0125 (WIPO Mar. 3, 2017) (ordering transfer of <philippeplein.com> and <philipppleinscarpe.com>, which were being used to sell allegedly counterfeit products). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trimbleus.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 13, 2021
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