Complainant is TP-Link International Limited of Los Angeles, United States of America (“United States”), represented by LTL Attorneys LLP, United States.
Respondent is Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with A Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2016. On September 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 30, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 25, 2016.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on November 18, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant alleges that it is a Chinese company formed in 1996 and located in Shenzen, China, and that it is a leading manufacturer and seller of computer network hardware, software, accessories, and services. Complainant owns a number of U.S. trademark registrations for the mark TP-LINK, with dates of first use dating back to at least 1996. The disputed domain name was registered on May 31 2011. Screenshots of the website associated with the disputed domain name are attached to the Complaint, and contain a “BUY THIS DOMAIN” link as well as pay-per-click links. 5. Parties’ Contentions A. Complainant
Complainant alleges that it is a Chinese company formed in 1996 and located in Shenzen, China, and that it is a leading manufacturer and seller of computer network hardware, software, accessories, and services; Complainant alleges that its worldwide annual sales exceed USD 1 billion, and that it spends a significant amount on marketing and advertising, including through the “" website and various other websites that use the TP-LINK mark. Complainant attached to the Complaint evidence of a number of its U.S. trademark registrations for the mark TP-LINK, with dates of first use dating back to at least 1996. Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s TP-LINK mark because the disputed domain name wholly incorporates the mark. TP-LINK alleges that its marks are well known and that there is nothing to indicate Respondent is known by the disputed domain name. TP-LINK alleges that it has no relationship with Respondent and never authorized Respondent to use the TP-LINK mark or the disputed domain name or to provide the services offered through the disputed domain name. Complainant alleges that Respondent registered and is using the disputed domain name in bad faith, for purposes of selling the disputed domain name for valuable consideration in excess of out-of-pocket costs, both because Respondent’s registrar allegedly “advertises itself as assisting registra[nt]s in monetizing and selling their domain names” and because the website for the disputed domain name (screenshots of which are attached to the Complaint) solicits offers to purchase the disputed domain name. Complainant also asserts that the website for the disputed domain name contains advertisements for networking products and services, and that “the Respondent intentionally attempted to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web site or of a product or service on the website.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant’s trademark registrations attached to the Complaint demonstrate that Complainant has rights in the TP-LINK mark.
The disputed domain name consists of the TP-LINK mark without the dash, plus the word “login”, plus the “.net” generic Top-Level Domain (“gTLD”). Generally, “a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 2005). Thus, the deletion of the dash, and the addition of the generic word “login” and the “.net” gTLD, do not distinguish the disputed domain name from Complainant’s mark. See Stripe, Inc. v. Edward Benincase,WIPO Case No. D2016-0016 (“The addition of the term ‘login’ does not change the analysis as the addition of a generic word does not serve to sufficiently distinguish a disputed domain name from a complainant’s mark.”); Multaler & CIE, SA v. Yonka Skincare Clinic,WIPO Case No. D2004-1007 (finding confusing similarity despite deletion of a dash, addition of the word “institute”, and addition of “.com” gTLD); The Dow Chemical Company and Flexible Products Company v. Domain Discreet/ Commercial Thermal Solutions Inc,WIPO Case No. D2008-0910 (“Omission of the dash from the FROTH-PAK trademark in each of the Domain Names is irrelevant for purposes of the Policy.”); Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046(“the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names (‘.com’, ‘.net’) does not change the assessment of confusing similarity.”).
Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”, paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by . Rather, Complainant asserts that its marks are well known, that Respondent is not known by the disputed domain name, and that Complainant has never authorized Respondent to use the TP-LINK mark or the disputed domain name. These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. […] Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); Marriott International, Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610 (“No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”); Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name”).
Complainant also attached to the Complaint screenshots of the website associated with the disputed domain name, which website displays pay-per-click links including a link to a competing vendor of networking equipment. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” See MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS,WIPO Case No. D2008-0009. See also The American Automobile Association, Inc. v. PSI,WIPO Case No. D2008-1931 (“The use of a domain name incorporating the Complainant’s AAA mark to attract Internet users to a pay-per-click website containing links to other providers of competing products and services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.”); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.6 (where pay-per-click “links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion”).
Based on the findings set forth above, the Panel holds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
The allegations in the Complaint relate to factors 4(b)(i), 4(b)(iii), and 4(b)(iv) of the Policy. The website for the disputed domain name contains a “BUY THIS DOMAIN” link. While no purchase price is specified, the use of Complainant’s trademark and the presence of pay-per-click links suggests a profit motive. The website also contains pay-per-click links, including links that relate to Complainant as well as to a competitor of Complainant.
This record supports the conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. ICICI Bank Limited and ICICI Prudential Life Insurance Corporation Limited v. Dmitry Vasilev, Elmaco Ltd.,WIPO Case No. D2016-0566 (finding bad faith where (1) the disputed domain name appeared to be registered in order to capitalize on the reputation of the Complainant’s mark, (2) the Respondent had sponsored links on its website, and (3) the Respondent’s website had a banner that stated “BUY THIS DOMAIN”). See also Hoffmann-La Roche Inc. v. Kevin Chang,WIPO Case No. D2008-1344 (“The unauthorized use of Complainant’s trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.”); The American Automobile Association, Inc. v. A Domain Privacy / Transure Enterprise Ltd.,WIPO Case No. D2010-0565 (“the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is prima facie evidence of bad faith”). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Bradley A. Slutsky
Sole Panelist
Date: November 21, 2016
Full & Egal Universal Law Academy