Polycom, Inc. v. lixinchun / lixianren
Claim Number: FA1404001553212
Complainant is Polycom, Inc. (“Complainant”), represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA. Respondent is lixinchun / lixianren (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <polycom-tel.com>, registered with eName Technology Co., Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2014; the National Arbitration Forum received payment on April 8, 2014. The Complaint was received in both Chinese and English.
On April 8, 2014, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <polycom-tel.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 15, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 5, 2014 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@polycom-tel.com. Also on April 15, 2014, the 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a formal Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Complainant offers quality tele-presence, video, and voice equipment, applications, and services. Complainant has been in business since at least 1992, and has spent millions of dollars advertising and promoting its goods and services.
· Complainant has rights in the POLYCOM mark, used in connection with telecommunications goods and services. Complainant owns registrations for the POLYCOM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,783,295, registered July 20, 1993).
· Respondent’s <polycom-tel.com> domain name is confusingly similar to Complainant’s POLYCOM mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic abbreviation “tel,” which is short for “telephone.”
· Respondent does not have any rights or legitimate interests <polycom-tel.com> domain name.
· Respondent is not in any way affiliated with Complainant, and Complainant has not granted Respondent any authority to use its POLYCOM mark. Respondent used to be an approved reseller of one of Complainant’s distributors, but no longer holds that position.
· Respondent is using the <polycom-tel.com> domain name to sell Complainant’s goods.
· Respondent is intentionally attempting to attract Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s POLYCOM mark. Respondent is using the disputed domain name to sell Complainant’s goods without authorization from Complainant.
· Respondent had knowledge of Complainant’s POLYCOM mark prior to registering to the <polycom-tel.com> domain name because Respondent used to be a distributor for Complainant, but its reselling authority expired in June 2013. Additionally, Complainant’s POLYCOM mark is extensively advertised and well-known.
· Respondent registered the <polycom-tel.com> domain name on June 26, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark and common law rights for the POLYCOM mark. Respondent’s domain name is confusingly similar to Complainant’s POLYCOM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <polycom-tel.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 has rights in the POLYCOM mark, used in connection with telecommunications goods and services. Complainant owns registrations for the POLYCOM mark with the USPTO (e.g., Reg. No. 1,783,295, registered July 20, 1993). Although Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations, a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel finds that Complainant has rights in the POLYCOM mark within the meaning of Policy ¶ 4(a)(i) as Complainant owns a valid registration for the mark with the USPTO.
Complainant alleges that Respondent’s <polycom-tel.com> domain name is confusingly similar to Complainant’s POLYCOM mark. Complainant claims that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic abbreviation “tel,” which is short for “telephone.” The disputed domain name also adds a hyphen and the generic top-level domain (“gTLD”) “.com.” First, the addition of a generic term to a trademark in a domain name does not sufficiently differentiate the domain name from the trademark. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). Next, the addition of a hyphen and a gTLD are both irrelevant for the purposes of confusing similarity analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <polycom-tel.com> domain name is confusingly similar to Complainant’s POLYCOM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have any rights or legitimate interests in the <polycom-tel.com> domain name. Complainant asserts that Respondent is not in any way affiliated with Complainant, and Complainant has not granted Respondent any authority to use its POLYCOM mark. Complainant explains that Respondent used to be an approved reseller of one of Complainant’s distributors, but no longer holds that position. The WHOIS record for the disputed domain name lists “lixinchun” as the domain name registrant and “lixianren” as the registrant organization. Based on the record, the Panel concludes that Respondent is not commonly known by the <polycom-tel.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent is using the <polycom-tel.com> domain name to sell Complainant’s goods. Using a confusingly similar domain name to sell a complainant’s goods without authorization does not demonstrate a bona fide offering of goods and services, or a legitimate noncommercial or fair use. See Alticor Inc. v. Lanfang Song / SONG LAN FANG, FA 1359599 (Nat. Arb. Forum Feb. 2, 2011)(finding that selling the complainant’s products through the <amway68.com> domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, 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 under Policy ¶ 4(c)(iii) because Respondent is using the <polycom-tel.com> domain name to sell Complainant’s goods without authority to do so.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <polycom-tel.com> domain name in bad faith. Complainant asserts that Respondent is intentionally attempting to attract Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s POLYCOM mark. Complainant urges that Respondent is using the disputed domain name to sell Complainant’s goods without authorization from Complainant. Using a confusingly similar domain name to sell a complainant’s goods demonstrates bad faith under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). Therefore, the Panel finds that Respondent registered and is using the <polycom-tel.com> domain name within the meaning of Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to sell Complainant’s products without the authority to do so.
Complainant claims Respondent had knowledge of Complainant’s POLYCOM mark prior to registering to the <polycom-tel.com> domain name because Respondent used to be a distributor for Complainant, but its reselling authority expired in June 2013. Specifically, Complainant asserts that Respondent has been selling Complainant’s products under the POLYCOM mark since as early as 2012, and continues to do so without authorization through the domain name presently at issue. Additionally, Complainant explains that its POLYCOM mark is extensively advertised and well-known. The Panel determines Respondent had actual knowledge of Complainant’s mark at the time Respondent registered the disputed domain name, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied 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 <polycom-tel.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 21, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page