WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Acer Incorporated v. Registration Private, Domains By Proxy, LLC / Ashish Gupta
Case No. D2018-1404
1. The Parties
The Complainant is Acer Incorporated of Taipei, Taiwan province of China, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Ashish Gupta of Noida, India.
2. The Domain Name and Registrar
The disputed domain name <acersupportphonenumber.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2018. On June 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 June 29, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 2, 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 the Respondent of the Complaint, and the proceedings commenced on July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2018.
The Complainant filed an unsolicited supplemental filing with the Center on July 29, 2018.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 3, 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 Acer Incorporated, a multinational hardware and electronics corporation, providing IT products and services. The Complainant was founded in 1979 and today is present in over 160 countries. In 2007, the Complainant ranked as the world's No. 3 PC vendor. The Complainant has over 7,000 employees working on research, design, marketing, sale, and support of products and various technical solutions in the field of Internet, gaming and virtual reality. The Complainant is organized into two main businesses: one is dedicated to the research, and support of IT products, and the second encompasses its Build Your Own Cloud (BYOC™) and e-business operations. The Complainant operates his official website at "www.acer.com" since 1994.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the word ACER in various jurisdictions throughout the world, including the following:
- the International Trademark for the word ACER with registration No. 516344 registered as of October 6, 1987;
- the Community Trademark for the word ACER with registration number 000653691 registered as of September 27, 1999.
The disputed domain name was registered on August 28, 2017 and resolved to an active website that appeared to be used for offering ACER technical support services that consumers could reach by calling at a presumably toll-free number.
According to evidence put forward by the Complainant, the following information was included on the website to which the disputed domain name resolved:
"ACER TECHNICAL SUPPORT SERVICES
We provide Technical Support for Acer Laptops, Acer Computers, Acer Tablets and Acer Drivers & Softwares with our 24-hour Technical Support Service Team.
Independent Acer Technical Support Phone Number 1-800-393-9107 Acer Repair Services Acer is a hardware and electronics producing Taiwanese Multinational Corporation specialized in advanced electronics technology having its headquarters in Xizhi, New Taipei city, Taiwan. The Acer products are desktop PCs, Laptop, Tablet, Notebooks, Smartphone, storage devices and peripherals. Acer also deals in gaming Pcs and accessories under it predator sub brand. Since past four decades Acer has been the top five computer manufacturing and company passes them though tough quality test to ensure reliability of hardware. High innovative research based services are made sure is delivered to user to improve learning and encouraging economic very exciting and advanced features. For all laptop categories such as Predator 15, predator 17, Aspire R13, Aspire R 14, Aspire E, and Aspire V well are supported at Acer Tech Support Number 1-800-3939107 which is toll-free. CALL NOW: 1-800-393-9107
OUR INDEPENDENT ACER TECHNICAL SUPPORT
We are a team of independent third party repair and support service provider. User can easily reach us via our toll-free number. Our qualified team of technicians are all time prepared to assist user whose devices are suffering from technical failure. Whenever any user is investing on electronic gadgets they need to be prepared for their repairing and broken charges as well after a certain point of duration. Be it small issue or big need to be repaired as early to avoid major loss. User only need to get access to Acer Tech Support Services via phone call on our toll-free number 1-800-393-9107 where user will get interacted with professional."
A cease-and-desist letter has been sent in what concerns the registration of the disputed domain name but no response was received from the Respondent.
At the date of the decision the website is inactive/blocked by Web Anti-Virus.
The Respondent was involved in two other UDRP proceedings, which were decided in favor of the respective complainants: Dell Inc. v. Ashish Gupta / Rohan Agrawal / Gaurav Kumar / Pandaje Technical Services Pvt Ltd., NAF Claim No. FA1708001746726; Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Ashish Gupta, WIPO Case No. D2017-2548.
5. Parties' Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's ACER trademark as it incorporates such mark in its entirety, and the term "supportphonenumber" does not sufficiently distinguish the disputed domain name from the registered trademark. On the contrary, the Complainant is of the view that adding such generic terms will strengthen people's belief that the website is related to the Complainant as the technical support is the core field of the Complainant who is providing the technical support for its products through its professionals and experts after providing them with the necessary extensive training program for the purpose of delivering technical support to the customers dealing with ACER products.
The Complainant argues that it has never authorized nor licensed the Respondent to use its trademarks ACER nor to seek the registration of any domain name incorporating the said trademark. The Respondent is not an authorized dealer, distributor or licensee of the Complainant. The Respondent is not affiliated with the Complainant in any way. The content of the website to which the disputed domain name redirects and the continuous usage of the disputed domain name after the cease and desist letter sent by the Complainant do not amount to a legitimate or fair use of the disputed domain name. With regard to the content of the website, the Complainant shows that it copies the Complainant's trademark ACER and uses the same green color as used on the Complainant's website, offers the same services to consumers, uses the same layout and content of the Complainant's well-known website. The Complainant concludes that the Respondent has no rights and legitimate interests with regard to the disputed domain name.
With regard the registration and use in bad faith, the Complainant contends that it is implausible that the Respondent was unaware of the Complainant's trademark ACER at the date of the registration of the disputed domain name given the long standing use of such trademark since 1998 and the notoriety of the ACER trademark throughout the world; the conclusion is also strengthen by the fact that the disputed domain name incorporates the Complainant's trademark in its entirety which demonstrates that the Respondent must have been aware of the existence of the Complainant's trademark ACER.
The Complainant further shows that the disputed domain name is directing consumers to get the needed technical support for ACER products through dialing a phone number mentioned on the website indicating that the call would be toll free, respectively with no charges. However, the Complainant argues that the call is charged according to the International Call price and no actual technical support is provided. The Complainant concludes that the Respondent is generating revenues, which proves the Respondents' bad faith. Also, the prominent use of the trademark ACER on the website to which the disputed domain name redirects, the offering of the same services as the Complainant, the use of the same layout and the same content as the Complainant's website indicates that the Respondent is intentionally creating a likelihood of confusion with the trademark ACER as to the source, sponsorship, affiliation, or endorsement of the website and the services offered thereon.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, and although the Rules do not provide expressly for unsolicited submissions, under paragraph 10(a) of the Rules the Panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously.
In this case the Complainant was informed by the Center by the letter of June 29, 2018 that the registrar-identified registrant and contact details differ from the named Respondent. The Complainant was informed that if it chooses to amend the Complaint this can be done by either replacing the named Respondent with the newly identified registrant or by adding the newly identified registrant as respondent. The Complainant was also informed of the possibility to include further facts or arguments in light of the new registrant information (e.g., as to the Respondent's rights or legitimate interests or bad faith). The Complainant filed an amended Complaint on July 2, 2018 adding the newly identified registrant as the Respondent. After almost a month as of submitting the amended Complaint, respectively on July 29, 2018, the Complainant filed an unsolicited supplemental filing, adding new legal arguments for the third element deriving from a similar UDRP case where the newly named respondent was previously found to have engaged in cybersquatting activities. The Complainant submitted the relevant decision, respectively the decision issued in the case Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Ashish Gupta, supra.
The information on similar cases in which the newly identified respondent might have been involved in the past was available when the Complainant submitted the amended Complaint; the Complainant failed to show the circumstances that prevented it to include such arguments in the amended Complaint. Under these circumstances, given also that the information presented by the Complainant is publicly available and considering the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, according to which a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision, the Panel will not allow the unsolicited supplemental filings by the Complainant.
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable", paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that it proved it has rights over the ACER trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.
Here the disputed domain name incorporates the Complainant's trademark ACER in addition to generic terms "support phone number".
The fact that a domain name wholly incorporates a complainant's trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
It is well accepted by UDRP panels that a generic Top-Level Domain ("gTLD"), such as ".com", is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: "[…] 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark ACER and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name "acer". See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
The Respondent failed to come forward with any explanation to show that it has rights or legitimate interests in the disputed domain name. Moreover, the disputed domain name was registered long after the Complainant registered its trademark ACER. In addition, it appears from the unrebutted evidence put forward by the Complainant, that the disputed domain name was used fraudulently, respectively on the website to which it resolved customer support ACER related services were offered without such services being provided, while the charges for the calls to the number listed on the website being nonetheless cashed. In the Panel's view this cannot amount to rights or legitimate interests in the disputed domain name. For a similar finding see Acer Incorporated v. Marco Martucci, WIPO Case No. D2017-2121.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
According to the unrebutted assertions of the Complainant, its ACER trademark is widely used in commerce since 1987, well before the registration of the disputed domain name in August 2017. The disputed domain name incorporates the Complainant's trademark and descriptive words in addition to the relevant gTLD. The website to which the disputed domain name resolved included the Complainant's trademark and imitated the Complainant's official website. Under these circumstances, it is most likely that the Respondent was aware of the Complainant's trademark at the registration date of the disputed domain name.
As regards the use of the disputed domain name, paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
"(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location."
The conduct of the Respondent falls under the above provisions. The use of the disputed domain name creates a likelihood of confusion to the ACER trademark of the Complainant. As held in similar situations, this Panel finds that the dominant part of the disputed domain name is "acer" and that the words "support phone number" may even add to the likelihood of confusion, since it is likely that Internet users are looking for support related to services offered by the Complainant. See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Ashish Gupta, supra. The website to which the disputed domain name resolved redirected users to a website similar to the official website of the Complainant, and included the Complainant's trademark ACER. In addition, the Respondent was using the disputed domain name apparently for fraudulent purposes by alleging to offer services related to the Complainant's products, but deceiving consumers by charging free-toll calls without providing the offered technical support services. For a similar situation Acer Incorporated v. Marco Martucci, supra.
The Panel considers that under such circumstances, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the trademark of the Complainant. The website created the false impression to be an official support service website of the Complainant.
The website to which the disputed domain name resolved included a mention that "[w]e are a team of independent third party repair and support service provider", but this did not represent an accurate disclaimer. Even if such statement would have represented a disclaimer, in accordance with WIPO Overview 3.0, section 3.7, as held by previous panels, the mere existence of a disclaimer cannot cure the finding of bad faith, when the overall circumstances of the case point in this direction. In this case, taking into account the configuration of the website at the disputed domain name with the Complainant's logo, and the nature of the disputed domain name, the Panel considers that the disclaimer is not enough as to avoid the likelihood of confusion. Furthermore, the mentioned disclaimer included by the Respondent can be considered as an admission by the Respondent that users may be confused as a result of the disputed domain name and the content of the website. See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Ashish Gupta, supra.
The following factors were considered by the Panel as indicative of bad faith registration and use of the above disputed domain name:
- the Respondent's lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210;
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy;
- the well-known character of ACER trademarks – as held for example in Acer Incorporated v. Marco Martucci, supra; Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
- The apparent change of the content of the websites after the receipt of the Complaint. The change to the Respondent's website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) and V&V Supremo Foods, Inc. v. firstname.lastname@example.org, WIPO Case No. D2006-1373;
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
In addition, paragraph 4(b)(ii) of the Policy, stating that "the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct", is relevant in this case. As described in section 4 above, the Respondent was involved in at least two other UDRP proceedings where similar factual situation determined the panels to decide in favor of the complainants. Given the factual situation in this case, as described above, the Panel considers that the circumstance listed under paragraph 4(b)(ii) of the Policy is applicable in this proceeding. See, HBI Branded Apparel Enterprises, LLC v. Gueijuan Xu, WIPO Case No. D2018-0188.
Furthermore, the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not necessarily objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357.
The Panel concludes that the disputed domain name was registered and 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 name <acersupportphonenumber.com> be transferred to the Complainant.
Date: August 17, 2018