Lenovo (Beijing) Limited Corporation China v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1209001465080
Complainant is Lenovo (Beijing) Limited Corporation China (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lenolvo.com> and <lenovoe.com>, registered with Internet.bs Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2012; the National Arbitration Forum received payment on September 28, 2012.
On October 5, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <lenolvo.com> and <lenovoe.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 October 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@lenolvo.com and postmaster@lenovoe.com. Also on October 9, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
i. United States Patent and Trademark Office ("USPTO") Reg. No. 3,149,377 registered Sept. 26, 2006;
ii. Chinese State Administration for Industry and Commerce (“SAIC”) Reg. No. 824,484 registered Mar. 15, 2004; and
iii. World Intellectual Property Office (“WIPO”) Reg. No. 855149 registered Sept. 15, 2005.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Lenovo (Beijing) Limited Corporation China, is one of the world’s largest makers of personal computers with operations in more than 60 countries on six continents. Complainant is the owner of the following trademark registrations for the LENOVO mark:
i. United States Patent and Trademark Office ("USPTO") Reg. No. 3,149,377 registered Sept. 26, 2006;
ii. Chinese State Administration for Industry and Commerce (“SAIC”) Reg. No. 824,484 registered Mar. 15, 2004; and
iii. World Intellectual Property Office (“WIPO”) Reg. No. 855149 registered Sept. 15, 2005.
Respondent, Fundacion Private Whois / Domain Administrator, registered the <lenolvo.com> and <lenovoe.com> domain names on August 24, 2011 and March 14, 2006, respectively. Respondent is using the disputed domain names to display third-party links to competing and unrelated websites and products. Respondent has been the respondent in many prior UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants.
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’s trademark registrations are sufficient for it to establish rights in the LENOVO mark under Policy ¶ 4(a)(i), despite Respondent’s purported location in Panama. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <lenolvo.com> and <lenovoe.com> domain names are confusingly similar to the LENOVO mark under Policy ¶ 4(a)(i) as the addition of the gTLD “.com” is irrelevant and the second-level portions of the domain names merely contain misspellings of Complainant’s mark. The disputed domain names either add the letter “l” or the letter “e” to Complainant’s mark along with the gTLD “.com.” The changes noted above are not sufficient to remove the disputed domain names from the realm of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <lenolvo.com> and <lenovoe.com> domain names are confusingly similar to the LENOVO mark 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).
Respondent is not commonly known by the disputed domain name per the WHOIS information, which identifies the registrant as “Fundacion Private Whois / Domain Administrator.” Further, Respondent has not been given permission to use any of Complainant’s marks and is not sponsored by Complainant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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).
Further, Respondent is using the disputed domain names to display third-party links to competing and unrelated websites and products. The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <lenolvo.com> and <lenovoe.com> domain names under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent has been the respondent in many prior UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants. See Chevron Intellectual Prop. LLC v. Fundacion Private Whois / Domain Admin., FA 1438289 (Nat. Arb. Forum May 16, 2012); see also Thomson Reuters v. Fundacion Private Whois / Domain Admin., FA 1439297 (Nat. Arb. Forum May 24, 2012); see also MCAFEE, INC. v. Fundacion Private Whois / Domain Admin., FA 1447283 (Nat. Arb. Forum July 24, 2012). Respondent’s prior UDRP proceedings, combined with the currently disputed domain name registrations, evidence Respondent’s bad faith registration and use of the <lenolvo.com> and <lenovoe.com> domain names under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Respondent’s use of the disputed domain name to provide Internet users with links to competing products and businesses creates a disruption in Complainant’s business and is evidence of bad faith registration and use. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent has registered and is using the disputed domain names to confuse Internet users into visiting its resolving website for commercial gain. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
As Respondent’s <lenolvo.com> and <lenovoe.com> domain names are typosquatted versions of Complainant’s LENOVO mark, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
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 <lenolvo.com> and <lenovoe.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 19, 2012
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