ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Lam Research Corporation v. hore aro Case No. D2023-4696 1. The Parties Complainant is Lam Research Corporation, United States of America (“United States” or “U.S.”), represented by Gamma Law, United States. Respondent is hore aro, United States. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Name.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2023. On November 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 14, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Domain Protection Services, Inc) and contact information in the Complaint. The Center sent an email communication to Complainant on November 16, 2023, 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 November 20, 2023. 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 November 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 26, 2023.
page 2 The Center appointed John C. McElwaine as the sole panelist in this matter on January 9, 2024. 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 a global supplier of innovative wafer fabrication equipment and services to the semiconductor industry. Relevant to this matter, Complainant is the owner of all rights in and to, among others, the following United States trademarks and service marks and registrations. - LAM RESEARCH, U.S. Reg. No. 2,171,618, registered on July 7, 1998; - LAM RESEARCH, U.S. Reg. No. 2,159,332, registered on May 19, 1998; and - LAM RESEARCH, U.S. Reg. No. 4,738,400, registered on May 19, 2015. Collectively these trademark rights are referred to herein as the “LAM RESEACH Mark.” Respondent registered the Domain Name on July 21, 2023. At the time of filing of the Complaint, the Domain Name redirects to Complainant’s main website at “www.lamresearch.com”. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. With respect to the first element of the Policy, Complainant asserts that it has offered the goods and services under LAM RESEARCH Mark since 1980 and acquired registered trademark rights in the U.S. in 1998. Complainant points out that the Domain Name is identical to Complainant’s LAM RESEARCH Mark. With respect to the second element of the Policy, Complainant alleges that Respondent is not a licensee or affiliate of Complainant, nor is Respondent otherwise authorized to use Complainant’s LAM RESEARCH Mark for any purpose, nor is Respondent authorized to redirect to Complainant’s official website. Complainant further asserts that Respondent is not commonly known as “lamresearch.works” and that LAM RESEARCH is an arbitrary mark. Complainant also alleges that Respondent will not be able to show legitimate use of the Domain Name because: (i) the Domain Name has an active Mail Exchange Record (“MX Record”) in its DNS configuration, which has appeared on a blacklist because it has already been associated with malicious email activity; and (ii) the Domain Name has redirected to Complainant’s official website since at least July 31, 2023. With respect to the third element of the Policy, Complainant asserts that its LAM RESEARCH mark is widely known because Complainant is a publicly traded company and a leading manufacturer of semiconductors with offices throughout the United States, Asia, Europe, and the Middle East. Further, Complainant asserts that the Domain Name redirects to Complainant’s official website. Thus, it is highly probable that Respondent knew of Complainant’s mark when the Domain Name was registered. As to bad faith use, Complainant alleges that Respondent is engaging in bad faith by redirecting the Domain Name to Complainant’s website in combination with registering and using the Domain Name for email purposes. B. Respondent Respondent did not reply to Complainant’s contentions.
page 3 6. Discussion and Findings Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove their assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Here, Complainant has shown valid trademark rights by virtue of its three United States trademark registrations for LAM RESEARCH. WIPO Overview 3.0, section 1.2.1. In addition, the entirety of the LAM RESEACH Mark is reproduced within the Domain Name. Accordingly, the Panel finds that the Domain Name is identical to Complainant’s LAM RESEARCH Mark in which Complainant has valid trademark rights. WIPO Overview 3.0, section 1.7. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy1 or otherwise. Complainant demonstrated that there is no evidence in the WhoIs data for the Domain Name indicating that Respondent has been commonly known by the terms “LAM RESEARCH”, rather, the WhoIs data provided by the Registrar for the Domain Name indicates that the registrant’s name is Hore Aro. Also, as it pertains to Complainant’s assertion that Respondent is not authorized by Complainant to use the LAM RESEARCH Mark, although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit a formal response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269. The Panel also finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c)(i) or (iii), as the Domain Name is currently being used to redirect to Complainant’s official website without its permission. Gilead Sciences, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Krug Jr Robert John, WIPO Case No. D2020-2662 (Finding that the disputed domain name , which redirected to complainant’s official website, not to be a bona fide use of the disputed domain name); Bureau Veritas v. Xavier Garreau, WIPO Case No. D2017-1570 (“The disputed domain name redirects to the Complainant’s official website, without authorization, which is likely to mislead Internet users into believing that the disputed domain name is connected to the Complainant’s business. In the Panel’s opinion, this does not claim for a use of the disputed domain name in connection with a bona fide offering of goods or services.”) In addition, to the extent that the Domain Name has been blacklisted for malicious prior use, panels have consistently found such use cannot be a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. 1 The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.”
page 5 Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which they had no rights or legitimate interests. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, the LAM RESEARCH Mark represents the goodwill of a well known global semiconductor company. Based on Complainant’s submission, which was not rebutted, Respondent must have known of Complainant’s LAM RESEARCH Mark when it registered the Domain Name, which is identical to Complainant’s LAM RESEARCH Mark and was used to redirect to Complainant’s website. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) Based on Complainant’s submissions, which were not rebutted by Respondent, the Panel finds that Respondent knew or should have known of Complainant’s LAM RESEARCH Mark, when it decided to register the Domain Name. Respondent’s use of the Domain Name in bad faith is further borne out by the fact that Complainant has also shown that Respondent is using the Domain Name to redirect traffic to Complainant’s official website located at “www.lamresearch.com”. Prior UDRP panels have found that a respondent redirecting a domain name to the complainant’s website without authorization can establish bad faith because the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See WIPO Overview 3.0, section 3.1.4; see also Hyatt Corporation, Hyatt International Corporation v. Victoria Cameron, WIPO Case No. D2022-4171; Skyscanner Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-0507 (Redirecting of a disputed domain name to a complainant’s website supports a finding that respondent registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s mark and/or disrupt complainant’s business). The Panel is satisfied that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. According to Policy paragraph 4(b)(iv), this is evidence of registration and use in bad faith of the Domain Name. Based upon the foregoing, Complainant has satisfied paragraph 4(a)(iii) 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 Domain Name, , be transferred to Complainant. /John C McElwaine/ John C McElwaine Sole Panelist Date: January 23, 2024
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