WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ubiquiti Networks, Inc. v. Contact Privacy Inc. Customer 1242494592 / Paul Rolle
Case No. D2018-1867
1. The Parties
The Complainant is Ubiquiti Networks, Inc. of New York, New York, United States of America (“United States”), represented by Morrison & Foerster, LLP, United States.
The Respondent is Contact Privacy Inc. Customer 1242494592 of Toronto, Canada / Paul Rolle of Nassau, Bahamas.
2. The Domain Name and Registrar
The Disputed Domain Name <unifi-ip.com> is registered with Google Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2018. On August 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2018, 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 17, 2018 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 August 17, 2018. On August 18, 2018, the Center received an informal email communication from the Respondent.
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 August 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2018. The Respondent sent informal email communications to the Center on August 22, 2018, and September 12, 2018. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties that would proceed to panel appointment on September 12, 2018.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 24, 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, founded in 2005, operates a NASDAQ listed technology business with revenue exceeding USD 865 million in 20171 , and ships equipment to more than 180 countries. The Complainant holds registrations for the trademark UNIFI in the United States (U. S.) which it uses to designate a range of wireless and communication technologies in class 9. U. S. Trademark Registration No. 4,068,223, for the stylized word mark UNIFI, shows an application date of August 4, 2010, and has been registered since December 6, 2011.
The Complainant operates a website using the domain name <unifi.com>.
The Respondent registered the Disputed Domain Name <unifi-ip.com> on April 8, 2018. The Disputed Domain Name resolves to a website displaying trademarks including UNIFI and UBIQUITI NETWORKS together with the ® symbol in each case and third party trademarks.
5. Parties’ Contentions
The Complainant cites its U. S. Registration No. 4,068,223, for the mark UNIFI, and variations of that mark as prima facie evidence of ownership of the mark.
The Complainant submits that its rights in this mark predates the Respondent’s registration of the Disputed Domain Name <unifi-ip.com> by several years. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the UNIFI trademark and that the similarity is not removed by the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (a) the Respondent has not made use of the Disputed Domain Name in connection with a bona fide offering of goods or services, (b) the Respondent is not commonly known by the Disputed Domain Name, and (c) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions. In its informal email communications to the Center, the Respondent referred to matters apparently unrelated to the current dispute.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark UNIFI in the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the UNIFI trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark UNIFI followed by (b) the acronym “IP” and the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “unifi-ip”.
It is also well-established that where a domain name incorporates a complainant’s trademark in its entirety, it is confusingly similar to that mark despite the addition of other terms (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The acronym “IP” appears to refer to the term used for the numerical label attached to network hardware that uses the Internet Protocol for communication. Alternatively, it could be a reference to intangible assets such as patents and copyright works that use the term IP as an acronym for Intellectual Property. Regardless, the acronym IP is irrelevant.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that it resolved to a website, which offers nothing for sale.
The Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. There is no indication that the Respondent was commonly known by the name “unifi-ip” prior to registration of the Disputed Domain Name.
The Respondent does not appear to be making a legitimate noncommercial or fair use of the Disputed Domain Name. There is nothing in the record to rebut the Complainant’s evidence. This Panel finds that the Respondent is making an illegitimate use of the Disputed Domain Name.
The Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the Panel finds the trademark UNIFI is so widely known in the fields of wireless and communications technologies, that it is inconceivable that the Respondent might have registered a domain name containing this mark without knowing of it. In this Panel’s view, the Respondent’s conduct in registering the Disputed Domain Name on April 8, 2018, long after the Complainant acquired trademark rights for UNIFI, with the additional letters “IP” indicates prior knowledge of the Complainant’s trademark rights and warrants an adverse inference to be drawn (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel found that a claim that the domain name at issue, <telstra.org>, could have been registered without knowledge of the complainant’s trademark, was not just implausible, but incredible).
Next, the Panel has considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see, Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007‑0542; Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008‑0647).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark UNIFI and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the purpose of preventing the Complainant from registering a corresponding domain name that reflects its communications business.
Moreover, the Disputed Domain Name is being used in connection with advertising that is not authorized by the Complainant in circumstances where Internet users are likely to form the mistaken belief of some association or relationship between the Respondent and the Complainant. The Complainant sells communications devices that connect to a computer network that uses the Internet Protocol for communication, also known as an “IP Address”, and the Disputed Domain Name features the acronym “IP”. The Respondent’s website also features two trademarks owned by the Complainant, reinforcing the potential for deception.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <unifi-ip.com> be transferred to the Complainant.
Date: October 5, 2018
1 According to its WikiPedia entry (“https://en.wikipedia.org/wiki/Ubiquiti_Networks”) accessed October 3, 2018; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.