L-com, Inc. v. Carl Thompson
Claim Number: FA1609001693715
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is Carl Thompson (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <l-comglobals.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2016; the Forum received payment on September 14, 2016.
On September 14, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <l-comglobals.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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-comglobals.com. Also on September 15, 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 Ho Hyun Nahm, Esq., 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
i) Complainant is the owner of common law rights in the trademark L-COM, which it has used continuously since 1985 in connection with various goods and services relating to its business as a provider of wired and wireless connectivity products for the electronics and data communications industries. The company’s product portfolio encompasses a broad range of products, including cable assemblies, connectors, adapters, computer networking components, and custom products. Complainant has rights in the L-COM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003). Respondent’s <l-comglobals.com> domain name is confusingly similar to the L-COM mark because it contains the entire mark along with the word “globals” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the disputed domain and fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <l-comglobals.com> domain name resolves to an inactive website.
iii) Respondent uses the <l-comglobals.com> domain name in bad faith because it resolves to an inactive website. Respondent registered the <l-comglobals.com> domain name in bad faith because it did so with actual or constructive knowledge of Complainant’s rights in the L-COM mark through Complainant’s use and registrations of the mark.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the <l-comglobals.com> domain name was created on August 19, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 contends that it is the owner of common law rights in the trademark L-COM, which it has used continuously since 1985 in connection with various goods and services relating to its business as a provider of wired and wireless connectivity products for the electronics and data communications industries. The company’s product portfolio encompasses a broad range of products, including cable assemblies, connectors, adapters, computer networking components, and custom products.
Complainant claims rights in the L-COM mark through its registration with the USPTO (e.g., Reg. No. 2,697,029, registered Mar. 18, 2003), which it uses for its business as a provider of wired and wireless connectivity products for electronics and data comunications industries. As such, the Panel finds that Complainant holds rights in the L-COM 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.).
Complainant contends that Respondent’s <l-comglobals.com> domain name is confusingly similar to the L-COM mark because it contains the words of the mark along with the gTLD “.com.” The Panel notes that the mark also contains the term “globals.” Accordingly, the Panel finds the <l-comglobals.com> domain name confusingly similar to the L-COM mark. 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.).
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.”).
Complainant makes no explicit arguments related to Policy ¶ 4(c)(ii) to indicate that Respondent is not commonly known by the <l-comglobals.com> domain name. However, the Panel notes that the available WHOIS information, provided by Complainant, lists “Carl Thompson” as Registrant. Accordingly, the Panel finds that Respondent is not commonly known by the <l-comglobals.com> domain name in light of this information, coupled with Respondent’s lack of response. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the 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).
Complainant maintains that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <l-comglobals.com> domain name resolves to an inactive website. Complainant has provided screenshots indicating that the website displays the words “Server not found.” As the Panel finds this evidence sufficient, it finds that Respondent fails to use the <l-comglobals.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any applicable arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant contends that Respondent uses the <l-comglobals.com> domain name in bad faith because it resolves to an inactive website. Complainant has provided screenshots indicating that the website displays the words “Server not found.”
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.). See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The particular circumstances of this case that the Panel has considered are: i) Complainant has used L-COM trademark continuously since 1985 in connection with various goods and services relating to its business as a provider of wired and wireless connectivity products for the electronics and data communications industries. The company’s product portfolio encompasses a broad range of products, including cable assemblies, connectors, adapters, computer networking components, and custom products, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. As the Panel finds such a failure to make an active use here, the Panel finds that Respondent uses the domains in bad faith under Policy ¶ 4(a)(iii).
As the Panel finds this evidence sufficient, it finds that Respondent uses the <l-comglobals.com> domain name in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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-comglobals.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 18, 2016
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