Strong Technology, LLC v. Steven Miles
Claim Number: FA1609001693825
Complainant is Strong Technology, LLC (“Complainant”), represented by Lori Lee Yamato of Knobbe, Martens, Olson & Bear, LLP, California, USA. Respondent is Steven Miles (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thestrongvpn.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2016; the Forum received payment on September 14, 2016.
On September 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thestrongvpn.com> 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 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@thestrongvpn.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 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant has rights in the STRONG VPN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,746,347, registered on February 9, 2010). Respondent’s <thestrongvpn.com> domain name is confusingly similar to the STRONG VPN mark because it contains the mark in full combined with the generic top-level domain (“gTLD”) “.com.” [1]
2. Respondent is not commonly known by the <thestrongvpn.com> domain name because the available WHOIS information identifies “Steven Miles” as Registrant and because Respondent has twice applied to and been denied by an affiliate program of Complainant’s and has not otherwise been permitted to use the STRONG VPN mark.
3. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website displays Complainant’s STRONG VPN mark and design in order to earn commissions by directing Internet users seeking Complainant towards competitors of Complainant.
4. Respondent uses the <thestrongvpn.com> domain name in bad faith because the resolving website is intentionally designed to attract Internet users by creating a likelihood of confusion as to Complainant’s affiliation with the website while providing links to competitors of Complainant. Respondent registered the <thestrongvpn.com> domain name in bad faith because it did so in a manner suggesting it must have been aware of Complainant’s rights in the STRONG VPN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STRONG VPN mark. Respondent’s domain name is confusingly similar to Complainant’s STRONG VPN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <thestrongvpn.com> domain name, and that Respondent registered and uses the 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 claims rights in the STRONG VPN mark through its registration with the USPTO (e.g., Reg. No. 3,746,347, registered on February 9, 2010), which it uses for virtual private network and Internet services. As such, the Complainant holds rights in the STRONG VPN mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
Complainant argues that Respondent’s <thestrongvpn.com> domain name is confusingly similar to the STRONG VPN mark because it contains the mark in full combined with the gTLD “.com.” The also differs from the mark in that it includes the word “the” and removes the space between words of the mark. Such changes do nothing to make the Respondent’s domain name any less confusingly similar to the STRONG VPN mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <thestrongvpn.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant maintains that Respondent uses the <thestrongvpn.com> domain name in bad faith because the resolving website is intentionally designed to attract Internet users by creating a likelihood of confusion as to Complainant’s affiliation with the website while providing links to competitors of Complainant-- Express VPN, Pure VPN, Hide My ASS, Vypr VPN, Safer VPN, Ironsocket, and IPVanish VPN. This evidence is sufficient for the Panel to conclude that Respondent has intentionally created confusion in its use of the domain name and therefore its actions are in bad faith according to Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant alleges that Respondent registered the <thestrongvpn.com> domain name in bad faith because it did so in a manner suggesting it must have been aware of Complainant’s rights in the STRONG VPN mark. Complainant urges that its extensive use of the mark and widespread consumer recognition imply actual knowledge on Respondent’s part. The Panel finds that the record supports Complainant’s contention that Respondent had actual knowledge of Complainant’s rights in the STRONG VPN mark at the time of domain name registration, and thus registered the <thestrongvpn.com> domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Complainant has 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 <thestrongvpn.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 17, 2016
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