L-com, Inc. v. Protection of Private Person / Privacy Protection
Claim Number: FA1708001746983
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is Protection of Private Person / Privacy Protection (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ilcom.info>, registered with Registrar of Domain Names REG.RU 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2017; the Forum received payment on August 30, 2017. The Complaint was submitted in both Russian and English.
On September 1, 2017, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <ilcom.info> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 September 8, 2017, the Forum served the Complaint and all Annexes, including a Written Russian language Notice of the Complaint, setting a deadline of September 28, 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@ilcom.info. Also on September 8, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant provides wired and wireless connectivity products and services for the electronic and data communication industries. Complainant uses the L-COM mark in conjunction with its business practices. Complainant registered the L-COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003). See Compl. Exs. A–G. Respondent’s <ilcom.info> is confusingly similar to the L-COM mark because it incorporates the mark in its entirety, removes the hyphen, adds the letter “i,” and adds the “.info” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent makes no bona fide offer of goods or services, or a legitimate noncommercial or fair use of the domain. Respondent’s <ilcom.info> resolves to a landing page displaying website creation information. See Compl. Exs. J–K.
Respondent registered and uses the disputed domain name in bad faith. Respondent’s <ilcom.info> disrupts Complainant’s business by diverting users to Respondent’s website. Respondent attempts to profit from users’ confusion as to source, affiliation, or sponsorship by Complainant. Respondent had constructive and/or actual notice of the Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides wired and wireless connectivity products and services for the electronic and data communication industries.
2. Complainant has established its trademark right in the L-COM mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003).
3. Respondent registered the <ilcom.info> domain name on August 10, 2017.
4. Respondent has caused the domain name to resolve to a landing page displaying website creation information which disrupts Complainant’s business.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the service of the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant provides wired and wireless connectivity products and services for the electronic and data communication industries. Complainant uses the L-COM mark in conjunction with its business practices. Complainant submits that it registered the L-COM mark with USPTO (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003) and has submitted evidence to that effect that the Panel accepts. See Compl. Exs. A–G. The consensus among UDRP panels is that USPTO registrations are sufficient to show rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, the Panel finds that Complainant’s registration with USPTO is sufficient to show rights in the L-COM mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s L-COM mark. Complainant submits that Respondent’s <ilcom.info> domain name is confusingly similar to the L-COM mark because it incorporates the mark in its entirety, removing the hyphen, and adding the letter “i” and the “.info” gTLD. The addition of letters and the removal of hyphens are insufficient to create a distinction between the mark and disputed domain name. See MTD Products Inc v ICS Inc, FA 1721505 (Forum Apr. 18, 2017) (holding that “[t]he removal of the hyphen [from complainant’s TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant”); OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i.’”). Furthermore, the inclusion of the “.info” gTLD is inconsequential in a Policy ¶ 4(a)(i) analysis. See 3M Company v Mirco Pinato / Pinato Graphics AG, FA 1569074 (Forum Aug. 12, 2014) (“[I]t seems evident the <scotchcal.info> domain name is confusingly similar to Complainant’s SCOTCHCAL mark under Policy ¶4(a)(i).”). Therefore, the Panel finds that Respondent’s <ilcom.info> domain name is confusingly similar to Complainant’s L-COM mark, thus satisfying Policy ¶4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s L-COM trademark and to use it in its domain name, making only a minor spelling alteration;
(b) Respondent has caused the domain name to resolve to a landing page displaying website creation information which disrupts Complainant’s business
(d) Complainant submits that Respondent is not commonly known by the disputed domain name. The WHOIS information associated with this case identifies Respondent as “Protection of Private Person.” See Compl. Ex. I. Absent a Response, the record lacks any affirmative evidence beyond the WHOIS information that Respondent is commonly known by the disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 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).”). As such, the Panel determines that the WHOIS information is sufficient to show that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) and the Panel so finds;
(e) Complainant also submits that Respondent has not made a bona fide offer of goods or services, or a legitimate noncommercial or fair use of the domain. Complainant shows that the disputed domain name resolves to a landing page providing information on how to set up a website. See Compl. Exs. J–K. “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).” Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003). Therefore, the Panel concludes that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business is not a bona fide offering of goods or services under the Policy. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and is using the disputed domain name in bad faith by disrupting Complainant’s business. Furthermore, Complainant submits that Respondent’s <ilcom.info> domain name attracts internet users to its website for commercial gain. In support of its submissions, Complainant argues that Respondent’s page merely acts as a placeholder, which may lead customers to think Complainant is no longer in business, causing them to seek out third-party competitors. See Compl. Exs. J–K. The Panel finds this activity disruptive to Complainant’s business and demonstrates Respondent’s intention to obtain commercial gain, both evincing bad faith registration pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Secondly, Complainant submits that Respondent had actual and/or constructive notice of the L-COM mark. Because Complainant’s USPTO registrations and mark use predate registration of the disputed domain name, Complainant argues that Respondent knew or should have known of Complainant and its rights in the L-COM mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” the Panel may find “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). The Panel finds on the evidence that Respondent had actual notice of Complainant’s L-COM trademark.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the L-COM mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ilcom.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 2, 2017
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