Arlo Technologies, Inc. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)
Claim Number: FA2204001991517
Complainant is Arlo Technologies, Inc. (“Complainant”), represented by Erica N. Goven, Nebraska, USA. Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <setuparlocamera.com>, registered with Gmo Internet, Inc.; GMO Internet, Inc. d/b/a Onamae.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2022; the Forum received payment on April 8, 2022.
On April 11, 2022, Gmo Internet, Inc.; GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <setuparlocamera.com> domain name is registered with Gmo Internet, Inc.; GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. Gmo Internet, Inc.; GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the Gmo Internet, Inc.; GMO Internet, Inc. d/b/a Onamae.com 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 12, 2022, the Forum served the Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of May 2, 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@setuparlocamera.com. Also on April 12, 2022, the Japanese and English 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 May 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case including Respondent’s failure to respond, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant operates in the smart devices industry, including online cameras.
Complainant has rights in the ARLO mark through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <setuparlocamera.com> domain name is confusingly similar to Complainant’s ARLO mark as the domain name incorporates the mark in its entirety and adds words related to Complainant’s business along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <setuparlocamera.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its ARLO mark in the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant on the disputed domain name’s resolving website.
Respondent registered and uses the <setuparlocamera.com> domain name in bad faith. Respondent attracts internet users for commercial gain to the domain name’s resolving website, where it passes off as Complainant and offers services related to Complainant’s ARLO trademark. There is no plausible circumstance under which Respondent could legitimately register or use the at-issue domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the ARLO mark.
Respondent has not been authorized to use Complainant’s trademark.
Respondent registered the at-issue domain name after Complainant acquired rights in ARLO.
Respondent’s uses the at-issue domain name to offer services that compete with services offered by Complainant.
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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the ARLO mark with the USPTO is sufficient to establish rights in a mark for the purposes of Policy 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <setuparlocamera.com> domain name contains Complainant’s ARLO trademark prefixed with the descriptive term “setup” and followed by descriptive term “camera” with all followed by the top level domain name “.com.” The differences between Respondent’s <setuparlocamera.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <setuparlocamera.com> is confusingly similar to Complainant’s ARLO mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <setuparlocamera.com> shows that “Domain Admin Privacy Protect, LCC” cloaks the actual registrant of the at-issue domain name. Notably, there is no evidence in the record indicating that Respondent might prove that Respondent is known by the <setuparlocamera.com> domain name or by ARLO. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <setuparlocamera.com> domain name addresses a website offering support and troubleshooting services for Complainant’s ARLO branded products. The design of the website is such that its look and feel may deceive website visitors into mistakenly believing the website is sponsored by Complainant. By using the confusingly similar domain name as it does, Respondent attempts to pass itself off as Complainant so that it may inappropriately capitalize on the goodwill residing in Complainant’s ARLO trademark by driving internet traffic to its own website. As such, Respondent’s use of the <setuparlocamera.com> domain name is in no way indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also, Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <setuparlocamera.com> domain name was registered and used in bad faith. As discussed below without limitation bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as discussed above regarding rights and legitimate interests, Respondent is using the at-issue domain name to pass itself off as Complainant and offer competing services. Doing so is evidence of bad faith attraction for commercial gain and indicative of Respondent’s bad faith under Policy ¶ 4(b)(iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods); see also Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith).
Moreover, Respondent registered the <setuparlocamera.com> domain name knowing that Complainant had trademark rights in ARLO. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s dedication of its <setuparlocamera.com> website to offering services related to Complainant’s ARLO trademark. Respondent’s prior knowledge of Complainant's trademark further demonstrates that Respondent registered and used <setuparlocamera.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“[T]he Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith 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 <setuparlocamera.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 12, 2022
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