WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Acer Incorporated v. Marco Martucci
Case No. D2017-2121
1. The Parties
The Complainant is Acer Incorporated of Taipei City, Taiwan, Province of China, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Marco Martucci of Anzio, Italy.
2. The Domain Names and Registrar
The disputed domain names <shopaaer.com>, <shopaeer.com> and <shopccer.com> are registered with Name.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2017. On October 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 31, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2017 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 amended Complaint on November 10, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on November 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2017.
The Center appointed Charles Gielen as the sole panelist in this matter on December 13, 2017. 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
The Complainant owns a number of trademark registrations, such as in the United States for the word mark ACER, registered under number 1,475,746 on February 9, 1988 and in the European Union for the word mark ACER, registered under number 000653691 on September 27, 1999. Both trademarks are registered for goods in class 9, such as computers and computer related products.
The disputed domain names <shopaeer.com> and <shopccer.com> were created on September 22, 2017. The disputed domain name <shopaaer.com> was created on September 28, 2017.
5. Parties’ Contentions
The Complainant contends that it is a major global manufacturer and seller of computers and other high-quality electronic consumer products. According to the Complainant, for three decades, it has extensively used, advertised, and promoted its products throughout the world under the trademark ACER and has sold billions of dollars of products under the ACER trademark. The Complainant argues that the trademark has become well-known and recognized as identification of high quality electronic products, and that its current and prospective customers use the Internet to search for its products. The Complainant uses as domain name for its website <acer.com>.
According to the Complainant the disputed domain names are virtually identical to the trademark ACER as they consist of the generic term “shop” and the terms “aaer”, “aeer” or “ccer” together with the extension “com”. The Complainant argues that the disputed domain names are classic examples of typo-squatting, a practice wherein a cyber-squatter uses a slight misspelling of another’s trademark to lure people to the cyber-squatter’s website when they make a typographical mistake. Therefore, the Complainant concludes that the combination of the misspelling of the trademark ACER and the generic term “shop" makes the disputed domain names confusingly similar to the trademark ACER.
Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain names which were registered long after the Complainant established substantial rights in the trademark ACER and also because the Respondent is not commonly known by the names “aaer”, “aeer” or “ccer” nor has the Respondent applied for or obtained any trademark registrations of the disputed domain names. According to the Complainant, the Respondent is using the disputed domain names to fraudulently obtain money from the Complainant’s customers and prospective customers. This appears from an inquiry from a customer who had tried to purchase an ACER product through the website associated with one of the disputed domain names, namely <aeer.com> (the other two disputed domain names are no longer associated to a website). According to this inquiry, the customer was charged
EUR 205 but never received a product or a confirmation of purchase. The Complainant argues that the Respondent’s use of the disputed domain names for fraudulent purposes shows that the Respondent has no rights or legitimate interests in these domain names. Moreover, the Complainant has not licensed or is otherwise permitted the Respondent to use the trademark ACER or to apply for or use any domain name incorporating or simulating this trademark.
Finally the Complainant argues that the Respondent registered and is using the disputed domain names in bad faith. First of all, the trademark ACER has a strong reputation and is widely known and famous. Secondly, the Respondent had constructive and actual notice of the rights of the Complainant in the trademark ACER when it recently registered the disputed domain names. Thirdly, the Respondent is using the disputed domain names to perpetuate fraud by impersonating the Complainant and purporting to sell the Complainant’s products, but deceiving customers by taking payments and sending no products and fourthly there exist no plausible or contemplated use of the disputed domain names by the Respondent that would be legitimate or lawful.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain names should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision.
A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark ACER based on several trademark registrations and intensive use that resulted in this trademark to be well known around the world. The disputed domain names contain as first part the word “shop” which is a generic word. Although for assessing confusing similarity the disputed domain names and the trademark have to be looked at as a whole, it is generally accepted that in such assessment a generic term only plays a secondary role. In particular because this generic term is used as the first term in the disputed domain names, it cannot be entirely ignored as it is also generally accepted that the first part of a term consisting of several parts, bears some extra emphasis. In looking at the disputed domain names as a whole, including the generic term “shop”, one would at first sight not immediately recognize the trademark ACER. The Panel however believes that there still is confusing similarity because it is clear that the three disputed domain names were chosen as misspellings of the trademark ACER. The terms “ccer”, “aae” and “aeer” contain letters that on a keyboard are adjacent to the letters of which the trademark ACER consists. Although the content of the websites associated with the disputed domain names or the intentions of the Respondent are generally not taken into consideration for assessing confusing similarity, it is clear from the facts of this case that it was the intention of the Respondent to cause confusion among Internet users seeking or expecting the Complainant, because products under the trademark ACER of the Complainant are offered for sale at least on the website associated with the domain name <aeer.com>, albeit fraudulently.
The Panel is of the opinion that for these reasons the disputed domain names are confusingly similar to the trademark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain names are confusingly similar, since the “.com” is generally understood to be a technical requirement. In making the comparison between the trademark and the disputed domain names the generic Top-Level Domain “.com” is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain names are confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. First of all, the Respondent has not come forward claiming any rights or legitimate interests in the disputed domain names and the Panel does not find so in the present record. Secondly, the disputed domain names were registered long after the Complainant started to use the trademark ACER. Thirdly, it appears from the facts of the case that the disputed domain name <aeer.com> is used fraudulently, namely associated with a website on which products under the trademark ACER are offered for sale without the sales being made. A person using the trademark of a Complainant in a fraudulent manner can never claim rights or legitimate interests.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain names were registered and are being used in bad faith.
The main reasons for this conclusion are as follows. First, there can be no doubt that it was the intention of the Respondent to choose domain names that contain intentional misspellings of the trademark ACER since on the website to which the disputed domain names resolves, the trademark ACER is used in connection with products offered for sale under that trademark. This is at least the case on the website with which the domain name <aeer.com> is associated. The other two disputed domain names were associated with similar websites, which have been deactivated upon the request of the Complainant. Second, by registering and using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of the Complainant as to the source, affiliation or endorsement of the website of the Respondent. Third, the Respondent is using the disputed domain names to perpetuate fraud by impersonating the Complainant and purporting to sell the Complainant’s products, but deceiving customers by taking payments and sending no products.
The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
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 names <shopaaer.com>, <shopaeer.com> and <shopccer.com> be transferred to the Complainant.
Date: December 24, 2017