The Complainant is Shenzhen Renqing Technology Co., Ltd, China, represented by Liangquan Xue, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Nitin Kumar, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2021, 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 the Complainant on August 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 27, 2021.
The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Center received an email communication from a third party on September 9, 2021. The Center notified the commencement of Panel appointment process on September 24, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on October 1, 2021. 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 BackgroundThe Complainant is a technology company specializing in digital devices based in China (including WIFI‑extenders).
The Complainant trades under the name “rockspace” and is the owner of United States trade mark number 5583073, registered on October 16, 2018, for ROCKSPACE (the “Mark”) together with a small device element.
The disputed domain name was registered on December 21, 2019. It is being used by the Respondent to direct Internet users to a webpage offering for sale goods which are likely to compete with the Complainant’s goods and which appear to be aimed at the same market.
5. Parties’ Contentions A. ComplainantThe Complainant argues that it has rights in the Mark by virtue of its ownership of the United States trade mark noted in section 4 above. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition of only the terms “re” and “local”, together with hyphens before and after the Mark, under the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant alleges that the Respondent has been using the disputed domain name to offer goods similar to those sold by the Complainant and that the use of the Mark in conjunction with the similar goods, in the disputed domain name and on the website to which it resolves, is likely to cause confusion to customers.
The Complainant suggests that the Respondent has been using the disputed domain name to procure Internet users’ personal details and to sell goods not related to the Complainant, and submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent registered the disputed domain name for the purpose of deceiving Internet users as to the party with whom they are engaging, and therefore registered it, and is using it, in bad faith. The Respondent’s use of the disputed domain name to offer goods similar to those of the Complainant further suggests that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith.
The Complainant argues that the Respondent’s use of the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Mark, contrary to the Policy, is evidenced by a complaint it received from a consumer who had purchased goods from the Respondent, mistakenly believing that it was purchasing those goods from the Complainant. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith.
B. RespondentAn email was received by the Center from an account with the name “TPlink Extender”, which appeared to reference the Complaint but did not use the name or contact details of the Respondent as shown on the WhoIs. That email submitted that the Respondent had no objection to the disputed domain name being transferred or deleted, but when asked by the Center to confirm their identity the sender did not reply and has not engaged further in this Complaint. The Respondent did not address or reply to the substance of the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of the terms “re” and “local”, and the use of hyphens, in the disputed domain name does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsAlthough a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that a coincidental adoption by the Respondent of the disputed domain name is highly unlikely.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. On the contrary, the fact that the website at the disputed domain name reproduces the ROCKSPACE trade mark along with information about WIFI-extenders (which is one of the products commercialized by the Complainant), affirms that the Respondent registered and used the disputed domain name to take advantage of its similarity with the Complainant’s trademark. Such registration and use cannot give rise to rights or legitimate interests for the Respondent in the disputed domain name.
The Respondent has not participated in these proceedings: the brief email received by the Center by a third‑party purportedly consenting to a transfer of the disputed domain name cannot be said to be “participation” in or a substantive response to the Complainant. That being so, the Panel finds that the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Panel notes that the disputed domain name was registered after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith. It is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to goods which compete with those of the Complainant.
The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not responded substantively to the allegations made in these proceedings. In light of the totality of the evidence, including the lack of any meaning of the Mark otherwise than as a reference to the Complainant, there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
7. DecisionFor 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
Gareth Dickson
Sole Panelist
Date: October 20, 2021