L-com, Inc. v. Manuel Lorca Ulloa / L-COM Servicios Integrales
Claim Number: FA1609001693079
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is Manuel Lorca Ulloa / L-COM Servicios Integrales (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <l-comservicios.com>, registered with Network Solutions, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2016; the Forum received payment on September 9, 2016.
On September 9, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <l-comservicios.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2016 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@l-comservicios.com. Also on September 14, 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 October 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 registered the L-COM mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <l-comservicios.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the mark and merely adds the generic term “servicios,” the Spanish equivalent of the English term “services.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <l-comservicios.com> domain name. Further, Respondent is using the domain name for the primary purpose of diverting Internet users seeking Complainant to Respondent’s resolving website, which displays a L-COM logo that is similar in color to the logo used by Complainant on its landing page. Additionally, the L-COM logo is located in approximately the same area on Respondent’s website as it is on Complainant’s website.
Respondent registered and is using the disputed domain name in bad faith. First, Respondent uses its domain name to attempt to sell competing services, in violation of Policy ¶¶4(b)(iii) and (iv). Second, Respondent uses the domain name in an attempt to pass itself off as Complainant. Finally, based on Complainant’s trademarks in the L-COM mark, Respondent knew or should have known of the mark and Complainant’s rights therein when it registered the disputed domain name.
B. Respondent
Respondent registered the <l-comservicios.com> domain name on July 15, 2016 and has not submitted a Response to this Complaint.
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 contends it has registered its L-COM mark with the USPTO (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003), and that it has rights in the mark under Policy ¶ 4(a)(i). Panels have found that a USPTO registration confers rights in a mark, even when the registration is not in the country that a respondent is operating in. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT/Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its L-COM mark.
Complainant further contends that Respondent’s <l-comservicios.com> domain name is confusingly similar to its L-COM mark. Complainant argues that Respondent has merely added the term “servicios” to Complainant’s entire mark, which is a generic term in Spanish that means “services.” Panels have found that generic terms, even if in another language, are insufficient to distinguish a domain name from a complainant’s mark. See Am. Online, Inc. v. Villanueva, FA 236589 (Forum April 2, 2004) (“The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks.”) Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s L-COM mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <l-comservicios.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name. The Panel notes the WHOIS information at <l-comservicios.com> lists “Manuel Lorca Ulloa” as the registrant, with “L-COM Servicios Integrales” as the listed organization. Panels have found that a respondent is not commonly known by a domain name where there is a lack of affirmative evidence in the record, even where the WHOIS information provides otherwise. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA 1602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims / MoneyTreeNow” as registration of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the <l-comservicios.com> domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it for legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent uses the confusingly similar domain name to divert Internet users who are in fact seeking Complainant to the website of Respondent. Complainant references Respondent’s resolving website, which displays a L-COM logo that is similar in colors to the logo used by Complainant on its landing page. Additionally, Complainant asserts that the L-COM logo is located in approximately the same area on Respondent’s website as it is on Complainant’s website. Panels have found that a respondent lacks rights and legitimate interests in a domain name when its purpose is to divert Internet users, presumably for commercial gain, or to pass itself off as a complainant. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under ¶ 4(c)(iii).”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). The Panel thus finds that Respondent is diverting Internet users and attempting to pass itself off as Complainant, and that such uses do not satisfy Policy ¶¶ 4(c)(i) and (iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses its domain name to attempt to sell its own competing services, in violation of Policy ¶¶ 4(b)(iii) and (iv). Panels have held that a respondent’s use of a domain name to promote products and/or services that compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) As Respondent does not dispute that it is using the domain name to promote competing services, the Panel finds that Respondent is registered and is using the domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant alleges, and Respondent does not dispute, that Respondent uses the domain name in an attempt to pass itself off as Complainant. Panels have held that a respondent’s use of a domain name to pass itself off as a complainant constitutes bad faith registration and use per Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002). As such, this Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Thus, Complainant has also 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 <l-comservicios.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 24, 2016
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