Trimble Inc. v. Wu Yu
Claim Number: FA2111001972253
Complainant is Trimble Inc. (“Complainant”), represented by Tara Hawkes of Holland & Hart LLP, Colorado, USA. Respondent is Wu Yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trimbleisphere.com>, registered with Dynadot, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2021; the Forum received payment on November 5, 2021.
On November 9, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <trimbleisphere.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 November 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2021 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@trimbleisphere.com. Also on November 11, 2021, 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 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that, for more than forty years, it has created unique solutions that help customers grow their business by delivering products and services that connect the physical and digital worlds. Complainant’s core technologies in positioning, modeling, connectivity, and data analytics enable customers to improve productivity, quality, safety, and stability. From purpose-built products to enterprise lifecycle solutions, Complainant’s software, hardware and services are transforming industries such as agriculture, construction, geospatial and transportation and logistics. Complainant’s spirit of innovation has been made manifest in its over 2,000 worldwide patents as well as its research and development centers in more than 15 countries. With offices in over forty countries and revenues of $3.27 billion for fiscal year 2019, the TRIMBLE trademark has come to represent an important global brand and carries associated goodwill of inestimable value. Complainant has rights in the TRIMBLE and INSPHERE marks through their registration in the United States in, respectively, 2002 and 2015. The TRIMBLE mark is well known.
Complainant alleges that the disputed domain name is virtually identical and confusingly similar to Complainant’s marks because it combines the TRIMBLE and INSPHERE marks, merely misspelling INSPHERE by omitting the letter “N”, and adds the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the TRIMBLE and INSPHERE marks. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name has resolved, at different times, to web pages that distribute malware, or to a parked page with advertising hyperlinks to unrelated third-party websites. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent offered the disputed domain name for sale at a price in excess of out-of-pocket costs. Further, Respondent used the disputed domain name to redirect users to either a website that distributes malware or to a parked page with pay-per-click advertising hyperlinks to unrelated third-parties. Additionally, Respondent engaged in typosquatting. Further, Respondent used a privacy service when registering the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TRIMBLE and INSPHERE marks based on Complainant’s long-term use of the marks and Respondent’s typosquatting. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks TRIMBLE and INSPHERE and uses them to provide products and services that connect the physical and digital worlds.
Complainant’s rights in its marks date back to, respectively, 2002 and 2015.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent is using the disputed domain name to resolve, at different times, to websites that download malware or that display advertising links for products and services not related to Complainant. Respondent offered the disputed domain name for sale for a price in excess of out-of-pocket costs.
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 disputed domain name combines Complainant’s TRIMBLE and INSPHERE marks, merely misspelling INSPHERE by omitting the letter “N”, and adds the “.com” gTLD. Combing a complainant’s marks, misspelling a mark, and adding a gTLD to form a disputed domain may not sufficiently distinguish the disputed domain name from the marks per Policy ¶ 4(a)(i) See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.); see also Liberty Mutual Insurance Company v. Texas Internet, FA1006001330686 (Forum Aug. 3, 2010) (holding <libertymutul.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark as the respondent simply omitted the letter “a”); see also The Wawanesa Mutual Insurance Co. v. Li Hou Chang, FA2001001881099 (Forum Mar. 3, 2020) (agreeing with complainant that respondent’s <wawaesa.com> domain was confusingly similar to the WAWANESA mark, as the respondent simply omitted the “n” which did not change the look, sound, or meaning of the mark); see also Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (finding the domain name <morganstanle.com> confusingly similar to complainant’s MORGAN STANLEY mark because it wholly incorporated the mark and merely omitted the letter ‘y’ and spacing within the mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain name: WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Wu Yu”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii)
The disputed domain name resolved, at different times, to a page displaying pay-per-click advertising links to unrelated third-parties, or to pages that downloaded malicious software. Where the respondent uses a domain to redirect users to competing services or to websites that prompt downloads of malicious software, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website contained advertising links to third party websites unrelated to Complainant’s business. Use of a domain name to resolve to a page of third-party links can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Furthermore, also as already noted, Respondent used the disputed domain name to prompt users into downloading malicious software. Where a respondent uses a disputed domain name to distribute malware the Panel may find that respondent uses the domain name in bad faith per Policy ¶ 4(a)(iii) See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).” Therefore, the Panel finds that the disputed domain has been registered and used in bad faith per Policy ¶ 4(a)(iii).
Additionally, Respondent offered to sell the disputed domain name for a price in excess of out-of-pocket costs. This is an indication of bad faith registration and use per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Finally Respondent engages in typosquatting by misspelling Complainant’s INSPHERE mark. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). As such, the Panel finds bad faith typosquatting under 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 <trimbleisphere.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill Panelist
Dated: December 9, 2021
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