CommScope, Inc. of North Carolina v. Zhao Zhi Cong
Claim Number: FA2204001991563
Complainant is CommScope, Inc. of North Carolina (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Zhao Zhi Cong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commscopemeta.com> (“Domain Name”), registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2022; the Forum received payment on April 8, 2022. The Complaint was received in English.
On April 11, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <commscopemeta.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 April 12, 2022, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 2, 2022 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@commscopemeta.com. Also on April 12, 2022, the Chinese and English language 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Preliminary Issue: Language of Proceeding
The language of the Registration Agreement in this case is Chinese. The Complaint has been provided in English and Complainant has requested that the language of the proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
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 Domain Name consists of a series of words or abbreviations in English. The Respondent has registered several other domain names consisting of English-language words. Moreover, the Respondent has filed an informal response clearly demonstrating a capacity to communicate in English.
After considering the circumstances of the present case, including the material referred to above indicating that the Respondent is likely to be able to communicate in English, and noting that the Respondent has not made any request that the proceeding continue in Chinese, the Panel decides that the proceeding should be continued in the English language.
A. Complainant
Complainant, CommScope, Inc. of North Carolina, provides a variety of communications products and services. Complainant has rights in the COMMSCOPE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,865,198, registered Nov. 29, 1994). Respondent’s <commscopemeta.com> domain name is confusingly similar to Complainant’s COMMSCOPE mark as it incorporates the entire mark and adds the term “meta” and the “.com” generic top level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <commscopemeta.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not permitted Respondent to use the COMMSCOPE mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent has failed to make an active use of the Domain Name.
Respondent registered and uses the <commscopemeta.com> domain name in bad faith. Respondent is not making active use of the Domain Name. Moreover, Respondent had actual knowledge of Complainant’s rights in the COMMSCOPE mark based on the fame of the COMMSCOPE mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However on May 1 and May 3, 2022, Respondent sent a pair of e-mails to the Forum that collectively constitute an informal response to the Complaint.
Respondent is a platform involved in the registration of domain names and seeks to register domain names for various industries by choosing a series of words or phrases suitable for particular industries. The Domain Name was registered because “comm” is short for communication, trade and commerce, “scope” means range and “meta” means a person’s name. The Domain Name was registered to refer to a meta-communication domain or meta-business domain. Respondent does not know about foreign enterprises and considers the registration to be a coincidence.
Complainant holds trademark rights for the COMMSCOPE mark. The Domain Name is confusingly similar to Complainant’s COMMSCOPE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the COMMSCOPE mark based on registration with the USPTO (e.g Reg. No. 1,865,198, registered Nov. 29, 1994). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <commscopemeta.com> domain name is confusingly similar to Complainant’s COMMSCOPE mark as incorporates the COMMSCOPE mark and adds the generic term “meta” and the gTLD “.com”. Adding a generic term and adding the gTLD “.com” does not negate confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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 holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the COMMSCOPE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Zhao Zhi Cong” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is inactive. In the absence of any additional evidence inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website.
Respondent asserts that the Domain Name was registered due to it being a combination of generic terms however it provides no documentary evidence in support of its business model or documentary evidence supporting its claim that the mark was registered for reasons other than its similarity with the COMMSCOPE mark. Furthermore, the Respondent’s explanation that the Domain Name was meant to signify some sort of meta-communication domain is both incoherent and implausible – the combination of words and abbreviations that comprise the Domain Name are so unusual that it is implausible that any third party would ever need or want the Domain Name for any particular descriptive meaning; indeed Respondent provides no reason whatsoever for the inclusion of the term “scope” in the Domain Name. A far more likely outcome is that any use of the Domain Name would be to take advantage of the similarity between the Domain Name and Complainant’s COMMSCOPE mark.
In the absence of any other evidence suggesting that the Domain Name is being held pending use of the Domain Name for a bona fide offering of goods or services or legitimate noncommercial or fair use, the Panel finds that Respondent is not using the Domain Name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, November 19, 2021, Respondent had actual knowledge of Complainant’s COMMSCOPE mark. The Complainant had, at the time of registration, used the COMMSCOPE mark for over 50 years and developed a significant reputation in the mark, one that could easily have been identified had Respondent conducted an Internet search prior to registration. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that incorporates the COMMSCOPE mark and the generic word “meta” other than to take advantage of Complainant’s reputation in the COMMSCOPE Mark. As discussed above the Panel considers the combination of words/abbreviations in the mark to be so unusual and implausible that no third party would register them by co-incidence or pursuant to any business plan unrelated to Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel notes that the actions of Respondent in this matter do not fall under the arguments set out in Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”)
Respondent has, without realistic explanation (or active use), registered a domain name that is wholly incorporates the coined and well-known COMMSCOPE mark. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the nature of the COMMSCOPE mark and the addition of a generic term) and in the absence of any coherent and supported explanation for such inactivity by Respondent (or any possible good faith use of the Domain Name by Respondent), the Panel finds that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).
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 <commscopemeta.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 10, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page