LENOVO (BEIJING) LIMITED CORPORATION CHINA v. Bin Song
Claim Number: FA1202001430690
Complainant is LENOVO (BEIJING) LIMITED CORPORATION CHINA (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Bin Song (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwlenovo.com>, registered with Canyon Gate Holdings LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2012; the National Arbitration Forum received payment on February 22, 2012.
On February 22, 2012, Canyon Gate Holdings LLC confirmed by e-mail to the National Arbitration Forum that the <wwwlenovo.com> domain name is registered with Canyon Gate Holdings LLC and that Respondent is the current registrant of the name. Canyon Gate Holdings LLC has verified that Respondent is bound by the Canyon Gate Holdings 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 February 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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@wwwlenovo.com. Also on February 28, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <wwwlenovo.com> domain name is confusingly similar to Complainant’s LENOVO mark.
2. Respondent does not have any rights or legitimate interests in the <wwwlenovo.com> domain name.
3. Respondent registered or used the <wwwlenovo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it has established its rights in the LENOVO mark by registering it with the USPTO (Reg. No. 3,149,377 registered September 26, 2006), SAIC (e.g. Reg. No. 824,484 registered March 15, 2004), and WIPO, under the Madrid Protocol (e.g., Reg. No. 824,484 registered January 27, 2012). The panel in Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) and Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) determined that numerous registrations for the complainant’s mark in agencies around the world sufficiently established rights in the mark under Policy ¶ 4(a)(i). The Panel finds that Complainant’s multiple registrations with numerous international authorities establish rights in the LENOVO mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <wwwlenovo.com> domain name is confusingly similar to its LENOVO mark as the domain name incorporates the entire LENOVO name, adding only “www” without the period separating it from the rest of the mark and the generic top-level domain (“gTLD”) “.com.” In Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000), the panel held that adding “www” reflects the common typing error of eliminating the period between the www and the domain name, and is not enough to defeat the confusingly similar characteristics of the domain name under Policy ¶ 4(a)(i). The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) found that adding the gTLD “.com” does not differentiate a disputed domain name from a mark. Based on this panel precedent, the Panel determines that adding “www” and the gTLD “.com” does not overcome the confusing similarity between the LENOVO mark and the <wwwlenovo.com> domain name under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <wwwlenovo.com> domain name and bases its argument on the fact that the WHOIS information identifies the domain name registrant as “Bin Song.” Complainant further argues that it has not given Respondent permission to use the LENOVO mark in any way and that Respondent is not affiliated with or sponsored by Complainant. The Panel concludes that due to the WHOIS information listed, as well as the lack of any further evidence, Respondent is not commonly known by the <wwwlenovo.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s use of the <wwwlenovo.com> domain name is not in relation to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to redirect Internet users to its website which features links to third-party, competing businesses. Complainant alleges that the links generate pay-per-click fees for Respondent and that such use is purely commercial. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) and ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), the respective panels found that operating a pay-per-click website at a confusingly similar domain name did not constitute a bona fide offering of goods or services. The Panel concludes that using the <wwwlenovo.com> domain name to offer competing hyperlinks in exchange for referral fees is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that the taking advantage of a common typographical error by adding the “www” prefix without the separating period before the LENOVO mark in the domain name constitutes typosquatting under Policy ¶ 4(a)(ii). The panel in Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005), concluded that the respondent lacked rights and legitimate interests in the disputed domain name because the prefix “www” added in front of a mark embodies typosquatting. The Panel determines that Respondent’s addition of “www” in front of Complainant’s mark without the separating period in the disputed domain name is proof of typosquatting and evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent, under the name “Bin Song” or “Song Bin,” is engaged in a pattern of registering domain names to prevent the holders of particular marks from registering domain names reflecting those marks. Complainant submits evidence of prior decisions transferring domain names from Respondent to the respective complainants. See Banco Bilbao Vizcaya Argentaria, S.A. v. Bin Song, D2009-1763 (WIPO Mar. 9, 2010); see also Backcountry.com, LLC v. Song Bin, FA 1317284 (Nat. Arb. Forum Apr. 30, 2010). Complainant also contends that Respondent has registered other typosquatted domain names containing third-party trademarks, which is also evidence of bad faith under Policy ¶ 4(b)(ii). The Panel finds that “Bin Song” and “Song Bin” refer to the same registrant and that Complainant’s evidence of the previous UDRP cases and/or the other domain name registrations is sufficient to prove a pattern of registration. The Panel thus finds that Respondent has demonstrated bad faith registration under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant argues that Respondent uses the <wwwlenovo.com> domain name to attract Internet users to the corresponding website in order to make a profit from the hyperlinks displayed. Complainant alleges that consumers are likely to become confused as to Complainant’s endorsement of the website and that Respondent achieves commercial gain due to hyperlink fees generated by misled consumers. The Panel concludes that Respondent’s attempt to attract Internet users by leading them to a website with “pay-per-click” links advertising businesses that compete with Complainant’s business constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant argues that Respondent’s domain name uses the entire LENOVO mark and adds the “www” prefix without the separating period, which constitutes typosquatting and is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel determines that intentionally misspelling words in an attempt to lure traffic from its anticipated destination is typosquatting and demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwlenovo.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 11, 2012
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