CommScope, Inc. of North Carolina v. peiyi Zi
Claim Number: FA2202001985206
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is peiyi Zi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <systimaxcabling.com>, registered with DomainName Path, Inc..
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2022. The Forum received payment on February 21, 2022.
On March 10, 2022, DomainName Path, Inc. confirmed by e-mail to the Forum that the <systimaxcabling.com> domain name is registered with DomainName Path, Inc. and that Respondent is the current registrant of the name. DomainName Path, Inc. has verified that Respondent is bound by the DomainName Path, Inc. registration agreement, which is in Chinese, 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 March 10, 2022, the Forum served the Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of March 30, 2022 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@systimaxcabling.com. Also on March 10, 2022, the English and Chinese 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 April 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the DomainName Path, Inc. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <systimaxcabling.com> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, contending that Respondent is conversant in English based upon the fact that the domain name has no meaning other than the English term. Additionally, the resolving page of the domain name states: “We are based in the United States of America, serve the global Chinese, and are protected by North American laws.” In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant offers a variety of communications services and products including cabling. Complainant has rights in the SYSTIMAX mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <systimaxcabling.com> domain name is virtually identical and confusingly similar to Complainant’s mark.
Respondent has no legitimate interests in the <systimaxcabling.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the SYSTIMAX mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a page with various links related to the goods and services offered by Complainant and its competitors and is also used to host adult-oriented material.
Respondent registered the <systimaxcabling.com> domain name in bad faith with actual knowledge of Complainants rights in the SYSTIMAX mark and did so in order to disrupt Complainant’s business. Respondent uses the domain name in bad faith to divert customers for commercial gain and to host adult-oriented material.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the SYSTIMAX mark through registrations of the mark with the USPTO (e.g., Reg. No. 1,644,744 registered May 14, 1991). The Panel finds Respondent’s <systimaxcabling.com> domain name to be confusingly similar to Complainant’s mark because it incorporates the SYSTIMAX mark in its entirety and merely adds the term descriptive term “cabling”, which is insufficient to distinguish the domain name from the mark, and adds the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <systimaxcabling.com> domain name was registered on February 14, 2022, many years after Complainant acquired rights in its SYSTIMAX mark. It resolves to a pornographic website that contains commercial advertising.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <systimaxcabling.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s SYSTIMAX mark when Respondent registered the <systimaxcabling.com> domain name and did so primarily for the purpose of disrupting the business of a competitor. Further, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii) and (iv).
Further, bad faith use and registration have been found where a respondent uses a complainant’s trademark in a domain name for the purpose of diverting Internet users to a pornographic website. See Loew’s Hotels, Inc. v. 志宇 赵, FA 1911542 (Forum Oct. 8, 2020) (use of a domain name to “deliver internet users to a website hosting pornographic material along with other content … demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv).”); Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Lei, FA 1909237 (Forum Sept. 21, 2020) (use of “domain name to divert internet users to a website hosting pornographic material along with other content.”).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <systimaxcabling.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 7, 2022
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