Zebra Technologies Corporation v. ZhangBing / Zhang Bing
Claim Number: FA1802001771081
Complainant is Zebra Technologies Corporation (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is ZhangBing / Zhang Bing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <symcode.net>, registered with Todaynic.com, Inc.
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 as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2018; the Forum received payment on February 8, 2018.
On February 10, 2018, Todaynic.com, Inc. confirmed by e-mail to the Forum that the <symcode.net> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the names. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, Inc. 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 February 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2018 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@symcode.net. Also on February 23, 2018, 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 March 20, 2018, 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, Zebra Technologies, is a parent company which wholly owns the company Symbol Technologies. Through its subsidiary, Complainant specializes in the manufacture and sale of barcode scanners, mobile computers, and RFID systems. Complainant has rights in the SYMBOL mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,672,015, registered Aug. 25, 2009). Respondent’s <symcode.net> domain name is confusingly similar to Complainant’s SYMBOL mark as Respondent takes part of Complainant’s mark (“sym”), combines it with the descriptive term “code” and adds it with the “.net” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <symcode.net> domain name as Respondent is not authorized or licensed to use Complainant’s SYMBOL mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or for a legitimate noncommercial or fair use; as Respondent attempts to pass off as Complainant to offer competing goods and services to Complainant’s customers.
Respondent attempts to disrupt Complainant’s business and divert users to the <symcode.net> domain name passing off as Complainant and offering competing goods and services, and this indicates bad faith registration and use. Additionally, Respondent uses the domain name to operate a phishing scheme. Furthermore, Respondent had actual knowledge of Complainant’s rights in the SYMBOL mark at the time it registered and used the domain name.
B. Respondent
Respondent failed to submit a response in this proceedings.The Panel notes the <symcode.net> domain name was registered on October 19, 2013.
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.”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Panel notes that the text of Respondent’s web site at this domain address is in English. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant claims rights in the SYMBOL mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to support a finding of rights in a mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant provides copies of its USPTO registrations for the SYMBOL mark (e.g., Reg. No. 3,672,015, registered Aug. 25, 2009). Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the SYMBOL mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <symcode.net> domain name is confusingly similar to Complainant’s SYMBOL mark as Respondent takes part of Complainant’s mark and combines it with a descriptive term and gTLD. Such changes to a Complainant’s mark may not negate any confusing similarity between a disputed domain name and the mark per Policy ¶ 4(a)(i). See Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”). Complainant argues Respondent takes the first portion of Complainant’s SYMBOL mark (“sym”) and combines it with the descriptive term “code” and the “.net” gTLD. The Panel further notes that the word SYMCODE appears on the corresponding web page in the same stylized format as is used for the registered mark SYMBOL. This suggests an intention to deceive or confuse the consuming public. The Panel finds that Respondent’s <symcode.net> domain name is confusingly similar to Complainant’s SYMBOL mark per Policy ¶ 4(a)(i).
Complainant asserts Respondent lacks rights and legitimate interests in the <symcode.net> domain name, as Respondent is not authorized or licensed to use Complainant’s SYMBOL mark and is not commonly known by the disputed domain name. When a respondent fails to submit a response to UDRP proceedings, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name per Policy
¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “ZhangBing / Zhang Bing,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <symcode.net> domain name.
Additionally, Complainant argues Respondent does use the <symcode.net> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent attempts to pass off as Complainant to sell competing goods and services. Passing off as a complainant in order to compete with the complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use Policy ¶¶ 4(c)(i) and (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides evidence that Respondent uses the domain name to display the exact stylization of Complainant’s SYMBOL mark and advertises for sale barcode scanning products which directly compete with Complainant’s business. Therefore, the Panel finds that Respondent’s attempts to pass off as Complainant and sell competing goods do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a) (ii).
Registration and Use in Bad Faith
Complainant claims that Respondent uses the <symcode.net> domain name in bad faith to disrupt Complainant’s business and divert users to its own website by attempting to pass off as Complainant and offer competing goods and services. Attempting to pass off as a complainant to sell competing goods or services can be evidence of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides evidence that Respondent’s domain name resolves to a website which displays designs similar to Complainant’s marks and logos, and offers for sale competing barcode scanning products. Therefore, the Panel finds Respondent attempts to pass off as Complainant in order to sell competing goods and services and that this constitutes bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv).
Additionally, Complainant contends that Respondent attempts to deceive users into disclosing their personal information at the <symcode.net> domain name through a phishing scheme. Phishing can be evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Complainant claims that Respondent uses the domain name to collect potential customers’ personal and financial information when users attempt to purchase the barcode scanning products. The Panel agrees, and finds Respondent’s attempt to phish for users’ personal information constitutes bad faith registration and use of the domain name per Policy
¶ 4(a)(iii).
Furthermore, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SYMBOL mark at the time Respondent registered the <symcode.net> domain name. Complainant claims, and Respondent makes no attempt to refute, that Respondent’s inclusion of marks similar to Complainant’s logo and registered marks in connection with the sale of directly competitive goods indicates that Respondent had actual knowledge of Complainant’s mark and rights therein. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s rights in the SYMBOL mark at the time Respondent registered the disputed domain name and that this constitutes bad faith registration and use per Policy ¶ 4(a)(iii).
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 <symcode.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 2, 2018
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