L-com, Inc. v. Donna Maroney
Claim Number: FA1609001693716
Complainant is L-com, Inc. (“Complainant”), represented by Gregory S. Bernabeo of Saul Ewing LLP, Pennsylvania, USA. Respondent is Donna Maroney (“Respondent”), represented by Donald Maroney of Kelly, Kelleher, Reilly & Simpson, Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lcomnorthamerica.com>, registered with Domain.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.
Richard Hill 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, Domain.com, LLC confirmed by e-mail to the Forum that the <lcomnorthamerica.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 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@lcomnorthamerica.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.
On September 22, 2016, Respondent’s counsel wrote to the Forum, but did not submit a Response, see below.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is 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 in the United States in 2003.
According to Complainant, the disputed domain name is confusingly similar to its L-COM mark because it contains the words of the mark along with the geographical description North America.
Complainant alleges that Respondent is not commonly known by the disputed domain name. Further, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain name resolves to an inactive website.
Further, says Complainant, Respondent uses the domain name in bad faith because it resolves to an inactive website. Respondent registered the disputed domain name in bad faith because it did so with at least constructive knowledge of Complainant’s rights in the L-COM mark, which is made evident by Complainant’s registrations and use of the mark.
Complainant’s states that its past experience is that domain names confusingly similar to its mark have been used to create e-mail accounts that appear to be legitimate and original from Complainant, because they include domain names confusing similar to Complainant’s domain name and/or trademark. On numerous occasions, the e-mail addresses based on confusingly similar domains have been used to send unauthorized and false and misleading e-mails to vendors, often requesting delivery of products on credit terms. In many instances, vendors have extended credit and shipped goods, based on the belief that the vendor was extending credit to Complainant, which leads to a financial loss to the vendors, and at least a potential for strained vendor relationships and/or a loss of goodwill by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent’s counsel stated that Respondent has been subject to credit card fraud, has no knowledge of the facts regarding the present case, and did not register the disputed domain name.
Complainant owns the mark L-COM and uses it to market wired and wireless connectivity products for the electronics and data communications industries.
Complainant’s rights in its mark date back to at least 2003.
The disputed domain name was registered in July 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being used. Respondent did not register the disputed domain name.
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.”).
Before considering the three elements of the Policy, the Panel will address the issue of the identity of the Respondent.
UDRP Rule 1 defines a respondent as “[T]he holder of a domain-name registration against which a complaint is initiated.” Forum Supplemental Rules paragraph 1(d) defines “the holder of a domain name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.”
While it is possible that Respondent’s identity was stolen and used to register the disputed domain name, the Panel nonetheless holds that the Registrar-confirmed registrant of the disputed domain name in the WHOIS record at commencement is the proper Respondent in the proceeding. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014).
The disputed domain name is confusingly similar to the L-COM mark because it contains the words of the mark along with the gTLD “.com.” The domain name also contains the geographic term “North America” and removes the hyphen between the “L” and “Com” of Complainant’s mark. Such differences are not sufficient to avoid a finding of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Respondent has never been known by the terms of the domain name. The Panel notes that the available WHOIS information lists “Donna Maroney” as Registrant. 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).
Respondent fails 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) because the disputed domain name resolves to an inactive website. 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)); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii)”).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for her use of Complainant’s mark. On the contrary, says Complainant, she knows nothing about the facts of the present case and did not register the disputed domain name. The registration in question is apparently a case of credit card fraud. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
The disputed domain name is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, there has been no response to the Complaint and the registrant apparently concealed its identity by fraudulently using Respondent’s credit card. Complainant’s past experience is that domain names confusingly similar to its mark have been used to create e-mail accounts that appear to be legitimate; those e-mail accounts have been used to send unauthorized and false and misleading e-mails to vendors, often requesting delivery of products on credit terms.
Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lcomnorthamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 11, 2016
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