Digi International Inc. v. shen chen
Claim Number: FA2302002031134
Complainant is Digi International Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is shen chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digi-inc.com>, registered with Travel Domains, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on February 8, 2023; Forum received payment on February 8, 2023.
On February 10, 2023, Travel Domains, LLC confirmed by e-mail to Forum that the <digi-inc.com> domain name is registered with Travel Domains, LLC and that Respondent is the current registrant of the names. Travel Domains, LLC has verified that Respondent is bound by the Travel Domains, 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 February 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2023 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@digi-inc.com. Also on February 14, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant manufactures wireless communication products. Complainant has rights in the DIGI trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,319,992, registered on February 22, 2000). Respondent’s <digi-inc.com> domain name is identical or confusingly similar to Complainant’s DIGI trademark as it merely adds a hyphen, the generic word “inc” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <digi-inc.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the DIGI trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent is using the disputed domain name in a phishing scheme. Additionally, Respondent has failed to make an active use of the disputed domain name other than forwarding to a website with adult content.
Respondent registered and uses the <digi-inc.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent diverts consumers away from Complainant’s website to pay-per-click links and adult-orientated material. Further, Respondent is disrupting Complainant’s business by using the disputed domain name for a phishing scheme targeting Complainant’s vendors. Finally, Respondent had actual knowledge of Complainant’s rights to the DIGI mark prior to registering the disputed domain name as evidenced by Respondent’s use of the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 2,319,992 DIGI (word), registered on February 22, 2000 for goods and services in Intl Classes 9, 37, 40, 41 and 42;
- No. 2,317,478 DIGI (logo), registered on February 15, 2000 for goods and services in Intl Classes 9, 37, 40, 41 and 42;
- No. 2,630,891 DIGI (word), registered on October 8, 2002 for goods and services in Intl Classes 9 and 42;
- No. 2,912,411 DIGI CONNECT (word), registered on December 21, 2004 for goods in Intl Class 9;
- No. 2,925,639 DIGI CONNECT ME (word), registered on February 8, 2005 for goods in Intl Class 9;
- No. 3,216,255 DIGI CONNECT EM (word), registered on March 6, 2007 for goods in Intl Class 9;
- No. 3,071,921 DIGI CONNECT SP (word), registered on March 21, 2006 for goods in Intl Class 9;
- No. 3,021,998 DIGI CONNECT WI-ME (word), registered on November 29, 2005 for goods in Intl Class 9;
- No. 2,624,198 WWW.DIGI.COM (word), registered on September 24, 2002 for goods and services in Intl Classes 9 and 42;
- No. 2,960,718 DIGI EASYPOWER (word), registered on June 7, 2005 for goods in Intl Class 9;
- No. 5,408,711 DIGI XBEE (word), registered on February 20, 2018 for goods in Intl Class 9; and
- No. 5,591,604 DIGI XBEE3 (word), registered on October 23, 2018 for goods in Intl Class 9.
The disputed domain name <digi-inc.com> was registered on September 17, 2022.
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”).
The Complainant asserts rights in the DIGI trademark through Complainant’s registration of the trademark with the USPTO (e.g. Reg. No. 2,319,992, registered on February 22, 2000). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel find that Complainant has demonstrated rights in the DIGI mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <digi-inc.com> domain name is identical or confusingly similar to Complainant’s DIGI trademark as it merely adds a hyphen, the generic word “inc” and the “.com” gTLD. The addition of punctuation, a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). In the present case, the generic word “inc” - an abbreviation of “incorporation” – in fact refers to the Complainant’s business structure as a legal person, and – if at all considered in this dispute – rather increase the similarity with the Complainant’s trademark. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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 Complainant contends that Respondent lacks rights or legitimate interests in the <digi-inc.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the DIGI trademark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “shen chen” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the DIGI trademark. Therefore, the Pane find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <digi-inc.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent is using the disputed domain name to trick vendors in a fraudulent phishing scheme. Using a disputed domain name to pass off as a complainant for the purpose of fraud and furthering a phishing scheme may indeed not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Complainant asserts that an employee received a call from a vendor who was contacted by someone using an email address associated with the disputed domain name trying to place a fraudulent order. Complainant contends it was not an authentic order and that Respondent was phishing for financial information. The Panel, based on the facts provided by the Complainant, find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Complainant argues that Respondent has not used the <digi-inc.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because the disputed domain name forwarded consumers to another website containing adult orientated material. Using a disputed domain name to forward to a website displaying adult orientated material may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(a)(ii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides a screenshot of the resolving website displaying adult orientated material. The Panel agrees with Complainants conclusion, and find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <digi-inc.com> domain name in bad faith as Respondent used the disputed domain name to divert consumers away from Complainant’s website to the disputed domain name which resolves in a website displaying pay-per-click links. Registration of a confusingly similar domain name with the intent to disrupt business by diverting consumers to a website with pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As noted above, Complainant offers a screenshot of the disputed domain name showing pay-per-click links that presumably provide Respondent revenue. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant contends that Respondent registered and uses the <digi-inc.com> domain name in bad faith as Respondent’s resolving website features adult-orientated content. Registration of a confusingly similar domain name that resolves to a website featuring adult orientated content may evince bad faith registration and use per Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Again, as noted above, Complainant has provided a screenshot of the resolving website featuring adult orientated material. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Next, Complainant contends that Respondent registered and uses the <digi-inc.com> domain name in bad faith as Respondent was using the disputed domain name in a phishing scheme. Use of a trademark to further a phishing scheme rights may evince bad faith registration and use per Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). As noted, an employee of the Complainant has given a sworn testimony that a vendor was contacted by a third party using the disputed domain name in an email address that was attempting to order materials fraudulently. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered the <digi-inc.com> domain name with actual knowledge of Complainant’s rights in the DIGI trademark. Use of a trademark to divert Internet traffic to a disputed domain name where a respondent uses complainant’s information in a fraudulent scheme can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent’s use of the DIGI trademark to further a phishing scheme and Respondent’s resolving website demonstrate Respondent’s actual knowledge of Complainant’s rights in the trademark prior to registration of the disputed domain name. In addition, the domain name is constructed to also be seen as identifying the Complainant’s company, by adding “inc” directly after the trademark. The Panel therefore find that Respondent registered the disputed domain name in bad faith per 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 <digi-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 22, 2023
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