WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PC Connection, Inc. v. Hope Lee
Case No. D2017-2590
1. The Parties
The Complainant is PC Connection, Inc. of Merrimack, New Hampshire, United States of America ("United States"), represented by GTC Law Group LLP & Affiliates, United States.
The Respondent is Hope Lee, lunan of Tangshan, Hebei, China.
2. The Domain Names and Registrar
The disputed domain names <cnnection.com> and <connction.com> are registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 27, 2017. On December 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 28, 2017, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain names;
(b) the disputed domain names are both registered in the name of the Respondent and the contact details are correct;
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to both disputed domain names.
The Center verified that 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 January 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 15, 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
The Complainant is a Fortune 1000 company in the United States. It is a direct marketer of various technology products and services, including but not limited to, computer software, hardware, computer products and accessories, consumer electronics, and information technology services and solutions. Its customers include consumers, business and educational bodies.
According to the Complaint, the Complainant has sold hundreds of millions of dollars' worth of products by reference to its trademark CONNECTION since its adoption of that trademark in 2007. In that period, it has also spent millions of dollars in connection with the promotion of its name and trademark.
The Complainant owns two US registrations for the mark CONNECTION:
- United States Registered Trademark No. 3,459,293 in respect of mail order and online retail store services featuring computers in International Class 35; and
- United States Registered Trademark No. 3,968,375 in respect of providing on-line electronic non-downloadable magazines related to information technology.
The Complainant applied for Trademark No 3,459,293 on January 30, 2004. It was registered on July 1, 2008. The Complainant applied for Trademark No. 3,968,375 on September 18, 2009 and it was registered on May 31, 2011.
The Respondent registered both disputed domain names on July 22, 2017.
Both disputed domain names resolve to websites which appear to be pay-per-click websites. The websites are very similar in design and appearance, but have different links or categories of links.
The website for the first disputed domain name (<connction.com>) has links for "Connection", "PC Connection", "WI Fi Internet Connection", "Connexion", "Connection ODBC", "Connection Telephone" and "Connection Connexion". Clicking on at least the link for "PC Connection" takes the browser to sponsored listings (i.e., advertisements for the types of goods and services which the Complainant offers for sale. Some of the resulting links, at least in the United States, are to goods and services offered from the Complainant, but others are not.
The website for the second disputed domain name (<cnnection.com>) has links for "Scanners", "Multimedia Software" and "Educational Software". The sponsored listings from these links appear to be for the types of goods and services offered by the Complainant.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served to the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Accordingly, paragraph 4(a) of the Policy provides that, to divest the Respondent of the disputed domain names, the Complainant must demonstrate for each of the disputed domain names each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of that disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the two United States Registered Trademarks referred to in section 4 above.
The second stage of this inquiry requires a visual and aural comparison of each disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
Disregarding the generic Top-Level Domain ("gTLD") ".com", each of the disputed domain names is essentially a misspelling of the Complainant's trademark. It has long been settled that these types of misspelling can satisfy the requirement of confusing similarity as the Complainant's trademark remains essentially recognizable with the domain name: WIPO Overview 3.0, section 1.9.
Accordingly, the Panel finds that each disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant points out that both its use and registration of its trademark occurred many years before the Respondent registered the disputed domain names. Neither of the disputed domain names is derived from the Respondent's name. The Complainant also has not licensed or authorised the Respondent to use its trademark in any domain name and, according to the Complainant, the Respondent is not associated with it or its business in any way.
The Panel notes that the trademark also has relevance as an ordinary English word and the Complainant's trademarks are registered for a limited and specific range of services. However, the trademarks do not appear to be descriptive of the particular services for which the Complainant has registered and is using them. Further, at least some of the links on the website associated with the first disputed domain name and, arguably, all of the links on the website associated with the second disputed domain name are for the provision of goods and services of the kind provided by the Complainant. While some of these links, at least in the United States, are to the Complainant, not all are. As the Complainant points out, use of a misspelling of the Complainant's trademark to redirect users to web directories in this fashion does not constitute use in good faith under the Policy: see e.g. WIPO Overview 3.0, section 2.9. Taken together, these factors satisfy the requirement of a prima facie case under the second requirement.
The Respondent has not attempted to rebut that prima facie case.
Accordingly, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that each of the disputed domain names has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant alleges that the Respondent registered the disputed domain names with knowledge of the Complainant's trademark and to take advantage of its significance as the Complainant's trademark.
The nature of the websites to which the disputed domain names resolve has been discussed above. The links on those websites to sponsored listings which compete with the Complainant plainly seek to take advantage of the Complainant's trademark and reputation.
This use by the Respondent has occurred in a context where the Complainant has been using its trademark extensively online for some ten years before the Respondent registered the disputed domain names. In addition, the Complainant's trademark is not directly descriptive of its services or the goods and services it offers for sale from its website. The misspellings embodied in the disputed domain names appear to have significance for the potential association with the Complainant's trademark.
In these circumstances and absent an express and credible denial from the Respondent, the Panel infers that the Respondent was aware of the Complainant's trademark when registering the disputed domain names.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
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, <cnnection.com> and <connction.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: February 28, 2018