CommScope, Inc. of North Carolina v. The Glow Company
Claim Number: FA1708001746273
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is The Glow Company (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscope.online>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 25, 2017; the Forum received payment on August 25, 2017.
On August 26, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <commscope.online> 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 August 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@commscope.online. Also on August 28, 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 20, 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, CommScope, Inc. of North Carolina, is a provider of broadband solutions, enterprise solutions, and wireless solutions, as well as antennas, cables, connectors, and networking systems. In connection with this business, Complainant uses the COMMSCOPE mark to promote its goods and services. Complainant has rights in the COMMSCOPE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,865,198, registered Nov. 29, 1994). See Compl., at Attached Ex. 1A (Certificate of registration for the COMMSCOPE mark). Respondent’s <commscope.online> is identical to Complainant’s COMMSCOPE mark as it appends the generic top-level-domain (“gTLD”) “.online” to Complainant’s wholly incorporated mark.
Respondent lacks rights and legitimate interests in the <commscope.online> domain name. Nothing in the record shows that Respondent is commonly known by or affiliated with the COMMSCOPE mark. Complainant also does not permit, license, or authorize Respondent to use the mark for any purpose. Respondent also does not use the disputed domain for any bona fide offering of goods or services because Respondent attempts to pass off as Complainant for Respondent’s commercial gain. See Compl., at Attached Ex. 10 (Screenshot of the resolving website for the disputed domain name).
Respondent registered and uses the <commscope.online> domain name in bad faith. Respondent displays a pattern of bad faith registration. Respondent disrupts Complainant’s business. Respondent intentionally attracts Internet users otherwise seeking Complainant to Respondent’s website for commercial gain. Finally, Respondent must have had actual or constructive knowledge of Complainant’s COMMSCOPE mark because Respondent duplicates Complainant’s website in an attempt to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and a provider of broadband solutions, enterprise solutions, and wireless solutions, as well as antennas, cables, connectors, and networking systems.
2. Complainant has established its trademark rights in the COMMSCOPE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,865,198, registered Nov. 29, 1994).
3. Respondent registered the <commscope.online> domain name on August 1, 2017.
4. Respondent has used the disputed domain name to attempt to pass itself off as Complainant for Respondent’s commercial gain.
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 a trademark or service mark on which it may rely. Complainant submits that it has trademark rights in the COMMSCOPE mark based upon its registration with the USPTO (i.e. Reg. No. 1,865,198, registered Nov. 29, 1994). See Compl., at Attached Ex. 1A. Registration of a mark with a trademark authority such as the USPTO sufficiently establishes a registrant’s rights in a 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.). Therefore, the Panel finds that Complainant has established rights in the COMMSCOPE mark for the purposes of Policy ¶ 4(a)(i).
The second question that arises is whether the <commscope.online> domain name is confusingly similar to Complainant’s COMMSCOPE mark. Complainant submits that it is, as Respondent has appended the gTLD “.online” to Complainant’s wholly incorporated mark. The addition of a gTLD to a mark is irrelevant in an analysis for identicalness as per Policy ¶ 4(a)(i). See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). The Panel therefore finds Respondent’s domain name to be identical to Complainant’s COMMSCOPE mark.
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 COMMSCOPE mark and to use it in its domain name;
(b) Respondent registered the domain name on August 1, 2017;
(c) Respondent has used the disputed domain name to attempt to pass itself off as Complainant for Respondent’s commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <commscope.online> domain name as Respondent is not commonly known by the domain name. Where a response is lacking, relevant information on this issue includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “The Glow Company” as the registrant. See Compl., at Attached Ex. 7. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the COMMSCOPE mark. Panels may use these facts as evidence of lacking rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <commscope.online> domain name under Policy ¶ 4(c)(ii);
(f) Complainant next argues that Respondent also does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass itself off as Complainant for its own commercial gain. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant proffers that Respondent copies Complainant’s website design and attempts to gain personal information from Internet users who otherwise think they are providing it to Complainant. See Compl., at Attached Ex. 10. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
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 does not have a right or legitimate interest 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 asserts Respondent displays a pattern of bad faith registration of the disputed domain name. Complainant argues that Respondent registered the disputed domain name in bad faith, partly evinced by Respondent’s propensity for registering numerous domain names in bad faith. A complainant may use serial cybersquatting to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, Complainant argues that the first hosting provider utilized by Respondent disabled Respondent’s website, and Respondent subsequently moved the website to a different hosting provider and put the infringing website back up. See Compl., at Attached Ex. 13-15 (Communication between Complainant and Registrars). Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith by engaging in cybersquatting.
Secondly, Complainant argues Respondent disrupts Complainant’s business. Registration and that use of a confusingly similar domain name that is identical to a complainant’s website demonstrates bad faith per Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Here, Respondent hosts a virtually identical resolving website on an identical domain name. See Compl., at Attached Ex. 10. As such, the Panel finds Respondent acted in bad faith per Policy ¶ 4(b)(iii).
Thirdly, Complainant submits that Respondent registered and uses the <commscope.online> domain name in bad faith because it attempts to pass itself off as Complainant. Passing off can evince bad faith registration and use. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Here, Respondent hosts an identical website with an identical domain name to attract Internet users otherwise seeking Complainant for Respondent’s commercial gain. See Compl., at Attached Ex. 10. The Panel therefore finds that Respondent registered and uses the disputed domain in bad faith.
Fourthly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s COMMSCOPE mark. Panels may disregard arguments of bad faith based on constructive notice as UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the COMMSCOPE mark based on the identical name and resolving website that contains images from Complainant’s website. See Compl., at Attached Ex. 2, 10 (Comparison of the resolving websites for Complainant and Respondent). The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Fifthly, 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 COMMSCOPE mark and in view of the conduct that Respondent has
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 <commscope.online> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 21, 2017
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