L-com, Inc. v. ALEJANDRO GARCIA SOLIS
Claim Number: FA1612001706508
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is ALEJANDRO GARCIA SOLIS (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lcomsecurity.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on December 8, 2016; the Forum received payment on December 8, 2016.
On December 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lcomsecurity.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@lcomsecurity.com. Also on December 12, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant has rights in the L-COM mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,029, registered March 18, 2003). Respondent’s domain name is confusingly similar to the L-COM mark as the domain name incorporates the entire L-COM mark and merely differs through the addition of the generic term “security” and the generic top-level domain “.com.”[1]
2. Respondent should be considered as having no rights or legitimate interests in the domain name. Respondent has never been known by the domain name or acquired trademark rights in any mark similar to the domain name.
3. Respondent’s use of the domain name, to resolve to a website that simply hosts a landing page, is not a noncommercial or fair use or use in connection with its business.
4. Respondent should be considered as having been registered and used the domain name in bad faith. Respondent registered the domain name with the purpose of disrupting Complainant’s business as Respondent may mislead or divert users seeking Complainant’s services to Respondent’s domain name.
5. Respondent also intends to confuse and attract internet users for commercial gain through use of a confusingly similar domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the L-COM mark. Respondent’s domain name is confusingly similar to Complainant’s L-COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lcomsecurity.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(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 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 (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 L-COM mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,697,029, registered March 18, 2003). See Trip Network Inc. v. Alviera, FA 914943 (FORUM Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant next claims that Respondent’s domain name, <lcomsecurity.com>,
is confusingly similar to the L-COM mark. Respondent’s domain name includes the entire L-COM mark and differs from the mark only through the addition of the term “security” and the gTLD “.com.” The addition of generic words and gTLDs to a domain name does not alleviate confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (FORUM Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel concludes that Respondent’s <lcomsecurity.com> domain name is confusingly similar to the L-COM mark for purposes of 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 <lcomsecurity.com> 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 claims that Respondent has never been known by the domain name or acquired trademark rights in any mark similar to the domain name. WHOIS information associated with the domain name identifies Respondent as “ALEJANDRO GARCIA SOLIS,” which does not resemble the domain name. A respondent is not commonly known by a domain name where the WHOIS information and the record are to the contrary. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum March 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel concludes that Respondent is not commonly known by the <lcomsecurity.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next claims that Respondent is not using the domain name in connection with a noncommercial or fair use or to further its business. Respondent’s domain name appears to resolve to a landing page displaying text in Spanish. Failing to make an active use of a domain name that is confusingly similar to a mark in which another party has rights is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (FORUM May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). The Panel finds that Respondent is not using the <lcomsecurity.com> domain name in accordance with Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
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 <lcomsecurity.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page