Qualcomm Incorporated v. Vladimir Portnov
Claim Number: FA1706001736578
Complainant is Qualcomm Incorporated (“Complainant”), represented by Anthony D. Peluso of Arent Fox LLP, California, USA. Respondent is Vladimir Portnov (“Respondent”), Isreal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qualcomm.support>, registered with GoDaddy.com, 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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2017; the Forum received payment on June 20, 2017.
On Jun 21, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <qualcomm.support> 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 June 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@qualcomm.support. Also on June 21, 2017, 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.
A timely Response was received and determined to be complete on June 22, 2017.
On June 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.support” to the fully incorporated mark.
Complainant further argues that it registered its QUALCOMM mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,549,614, registered July 25, 1989), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Annex A.
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that it has not licensed or otherwise authorized Respondent to use its QUALCOMM mark in any fashion and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Annex D.
Complainant further argues that Respondent, as the registrant of the disputed domain name, is responsible for the resolving website although it is parked and is used solely for displaying advertisements. Such use cannot be construed as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). Respondent has advertised its willingness to sell the disputed domain name in excess of $3000. Offers to sell a disputed domain name to the general public demonstrate that a respondent lacks rights or legitimate interests in a domain name.
Complainant further argues that Respondent has registered and is using the disputed domain in bad faith. Complainant further argues that Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the QUALCOMM mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Complainant further argues that Respondent’s actual knowledge of Complainant’s rights in the QUALCOMM mark as well as Respondent’s offers to sell the domain name to the general public are further evidence of bad faith.
B. Respondent
Respondent argues that he legally purchased the disputed domain name on August 7, 2016 from the registration service <godaddy.com>.
Respondent further argues that he is not commercially gaining from the resolving website and does not offer goods or services related to Complainant’s business.
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.
Complainant has registered the QUALCOMM mark with the USPTO (Reg. No. 1,549,614, registered July 25, 1989). See Compl., at Attached Annex A. Registration with a trademark authority such as the USPTO confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the QUALCOMM mark under Policy ¶ 4(a)(i).
Complainant asserts that the disputed domain name <qualcomm.support> is confusingly similar to Complainant’s mark because it merely appends the gTLD “.support” to the fully incorporated mark. The addition of a gTLD to a complainant’s mark is insufficient to defeat a test for confusing similarity. See Avaya Inc. v. Robert Bird, FA 1603045 (Forum Mar. 12, 2015) (“The Panel agrees that the disputed domain names are confusingly similar to the AVAYA mark pursuant to Policy ¶ 4(a)(i) as the added terms are descriptive of and related to Complainant’s offerings, and in the cases of <avaya.help>, and <avayaphone.systems>, the added gTLD adds to the confusion.”). Therefore, the Panel holds that the disputed domain name <qualcomm.support> is confusingly similar to Complainant’s mark.
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 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its QUALCOMM mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the disputed domain name WHOIS information of record lists “VLADIMIR PORTNOV” as the registrant. Therefore, the Panel holds that Respondent is not commonly known by <qualcomm.support>.
Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name; instead, the disputed domain name resolves to a page offering apartment rentals. See Compl., at Attached Annex E. Use of a confusingly similar domain name—even for noncompetitive third-party services—does not constitute a bona fide offering per Policy ¶¶ 4(c)(i) & (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). As such, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent offered to sell the disputed domain name to the public, and this demonstrates that Respondent lacks rights or legitimate interests in the domain name. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel notes that Respondent lists a price of $3000 in exchange for the domain name. See Compl., at Attached Ex. E, F.
Therefore, the Panel finds further evidence that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent has acted in bad faith by offering to sell the disputed domain name to the public for a price of $3000. Offering to sell a disputed domain name for an amount in excess of out-of-pocket costs may be evidence of bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provided screenshot evidence of the <qualcomm.support> WHOIS information page which displays a banner advertisement that Respondent is looking to sell the disputed domain name for $3000. See Compl., at Attached Annex F (Screenshot of Respondent’s offer to sell the disputed domain name). Therefore, the Panel finds Respondent acted in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith by attempting to attract Internet traffic and commercially benefit from the goodwill of the QUALCOMM mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that Respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links); see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page). Complainant has provided screenshot evidence of Respondent’s use of the disputed domain name to commercially benefit from the services offered. See Compl., at Attached Annex E. Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s QUALCOMM mark, Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the mark. Constructive notice is insufficient for a finding of bad faith; however, actual knowledge of a complainant’s rights in a mark is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the 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).”). Here, Complainant’s QUALCOMM mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1989. See Compl., at Attached Ex. A. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the disputed domain name was registered and subsequently used - evidence of Respondent’s bad faith per 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 <qualcomm.support> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: June 28, 2017
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