Complainant is HID Global Corporation of Austin, Texas, United States of America (“United States”), represented by Cohausz & Florack, Germany.
Respondent is John Makinwa of Chicago, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, 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 August 13, 2018 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 August 15, 2018.
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 August 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 14, 2018. 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 is the owner of registration for the word trademark HID GLOBAL on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 3522616, registration dated October 21, 2008, in international class (“IC”) 9, covering radio frequency identification (“RFID”) systems and their individual components, as further specified.1
Complainant is a manufacturer of secure identity solutions, selling physical access control products, logical access control solutions, and secure issuance solutions that comprise cards, readers, networked access solutions, card printer/encoders and software, among other products. Complainant’s products and services may be accessed at .
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created by Respondent on February 26, 2018.
Respondent has not made active use of the disputed domain name.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute proceedings under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant contends that it has rights in the trademarks HID GLOBAL and HID. Complainant alleges that the disputed domain name is “(quasi-)identical” to its trademarks.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not a licensee, retailer or in any other way authorized by Complainant to use its trademarks, including in a domain name; (2) Respondent is not using the disputed domain name for a bona fide offering of goods or services, and; (3) Respondent does not own rights in any trademark or corporate name corresponding to Complainant’s trademarks.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) passive holding of a domain name may constitute bad faith use; (2) Complainant’s trademark has a high level of distinctiveness; (3) there is no plausible good faith use to which Respondent could put the disputed domain name, and; (4) bad faith use of a disputed domain name may encompass sending email, phishing, identity theft or malware distribution.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. It appears that express courier physical delivery could not be completed because of false and/or incomplete address information provided by Respondent. There is no indication in the record of this proceeding of difficulties in transmitting email to the addresses provided by Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark HID GLOBAL, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark HID GLOBAL.
The disputed domain name directly incorporates the full word trademark of Complainant, substituting the letter “q” for the letter “g” (i.e., ). From a visual standpoint, the disputed domain name and Complainant’s trademark are nearly identical. An Internet user, including an email recipient, would likely fail to recognize the very minor distinction in appearance between Complainant’s trademark and the disputed domain name. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has established rights in the trademark HID GLOBAL, and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has not used the disputed domain name in connection with an active website. Respondent’s registration of the disputed domain name that is confusingly similar to Complainant’s distinctive trademark does not standing alone establish rights or legitimate interests.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the 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.” These include, “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”, or “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Respondent registered the disputed domain name which is nearly identical in appearance to Complainant’s distinctive trademark. As the disputed domain name effectively impersonates Complainant, there is no evident ground for Respondent to have selected it, other than for using it to induce Internet users, including email recipients, to confuse the owner/sponsor of a website or the sender of an email with Complainant and its products. Regrettably, it is not uncommon for domain names which closely approximate distinctive trademarks to be used as instruments of fraud or other abuse. Respondent has failed to provide any explanation for its decision to register the disputed domain name, and the Panel is unable to discern or infer any plausible legitimate reason for Respondent to have registered the disputed domain name. These circumstances are sufficient to establish Respondent’s registration and use of the disputed domain name in bad faith.
The Panel determines that Complainant has established that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy. 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 Complainant.
Frederick M. Abbott
Sole Panelist
Date: September 25, 2018
1 The USPTO registration for HID GLOBAL lists Complainant as the owner of registration as assignee of a Swedish Corporation, ASSA ABLOY AB CORPORATION. Complainant has further referred to USPTO registration for the word trademark and service mark HID, registration number 4923080, registration dated March 22, 2016, in ICs 9, 16, 42 and 45, covering, inter alia computer software for encrypting and authenticating data; bank cards; providing temporary use of non-downloadable software and applications relating to near field communication (NFC) tags, and; data lifecycle management services, all as further specified. Complainant has provided information regarding additional registrations outside the United States for the trademark HID. These other registrations refer to ASSA ABLOY as registrant. Complainant indicates that it is authorized to use the relevant trademarks of its parent company, ASSA ABLOY. As Complainant's HID GLOBAL trademark is sufficient to establish Complainant's trademark rights in this proceeding, the Panel does not further inquire into the relationship between Complainant and ASSA ABLOY, and it does not rely on the registrations held by ASSA ABLOY.
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