WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TP-Link International Limited v. Gurdeep Pal Singh
Case No. D2017-0884
1. The Parties
The Complainant is TP-Link International Limited of Los Angeles, California, United States of America ("United States"), represented by LTL Attorneys LLP, United States.
The Respondent is Gurdeep Pal Singh of Rupnagar, India.
2. The Domain Name and Registrar
The disputed domain name <tplinkmodemnet.net> 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 May 3, 2017. On May 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 May 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on June 15, 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, TP-Link International Limited, is the registered owner of marks for TP-LINK, including marks registered in the United States. The Complainant says that these marks were all assigned to TP-Link Technologies, Co Ltd. ("TP-Link Technologies") "and other various TP-Link Tech subsidiaries" (which the Complainant refers to collectively as TP-Link Tech) to use and enforce those marks.
The Complaint appears to suggest that TP-Link Technologies was also the original registrant of United States federal trademark registrations for its TP-Link marks, the earliest of which was registered in 2006. The implication from this is that the marks were originally registered to TP-Link Technologies, then were assigned to the Complainant, and then were licensed back to TP-Link Technologies. The evidence of registration of the Complainant's marks indicates an assignment from TP-Link Technologies to the Complainant. The Complaint provides little evidence about the nature of the Complainant's relationship with TP-Link Technologies. The Panel has inferred, from the references in the Complaint to the licensing arrangements between them, that they share a common business interest.
TP-Link Technologies is a Chinese company formed in 1996 and located in Shenzhen, China. TP-Link Technologies is a manufacturer and seller of computer network hardware products (such as routers, gateways, adaptors, and wireless controllers), network software, and related accessories in the United States and internationally. These products are available for sale in retail outlets throughout the United States.
TP-Link Technologies promotes and offers its products and services, in part, through its website at "www.tp-link.com" and via its subsidiaries who use localized domain names such as <tp-link.us>, <tp-link.de> and <tp-link.ca>.
As confirmed by the Registrar, the disputed domain name was registered to the Respondent since at least September 26, 2016.
The Complaint provides a screenshot of a website to which the disputed domain name refers. That website prominently features the Complainant's products, and appears as a website featuring, offering for sale, and offering apparent product support for only the Complainant's modem routers.
On March 9, 2017, the Complainant sent a cease-and-desist letter to the Respondent. The Complainant does not say whether it received a reply.
The Complainant has previously been a successful complainant in proceedings under the Policy, including at least one case with a similarly named respondent as in this case, and with generally similar circumstances, including a somewhat similar disputed domain name, a lack of a response, a website set up by the then respondent that purported some connection with the Complainant's products. See, e.g., TP-Link International Limited v. Gurdeeppal Singh, RLS, WIPO Case No. D2016-2533. The Complainant's arguments, as described in that case, were also apparently very similar to the Complaint filed in this case. The Complainant has also been successful in other cases relating to its TP-LINK mark, e.g., TP-Link International Limited v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2016-1922.
5. Parties' Contentions
The Complainant says that, firstly, the disputed domain name is identical or confusingly similar to its TP-LINK mark. The Complainant's mark is wholly incorporated in the disputed domain name. It is well established that a domain name that wholly incorporates a trademark will, in most cases, be confusingly similar to that trademark for the purposes of the Policy. The website at the disputed domain name further exacerbates confusion by prominently featuring the Complainant's marks.
The Complainant, secondly, says that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent's use is commercial and not fair use. A use cannot be fair where there is no legitimate connection between the Respondent and its use of the disputed domain name.
The Complainant, thirdly, says that the disputed domain name was registered and has been used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating confusion with the Complainant's mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
There is no doubt that the Complainant has registered rights in registered marks relating to its products. The Complainant provided evidence of its various registered rights for TP-LINK. This mark was registered before the date of the registration of the disputed domain name in 2016.
With the exclusion of the hyphen between the terms "tp" and "link", the Complainant's mark is entirely incorporated in the disputed domain name, as the first-appearing element. The Panel considers that the exclusion of the hyphen is trivial, and of little consequence for the purpose of comparison in this case. A similar conclusion was reached by the panel in TP-Link International Limited v. Gurdeeppal Singh, RLS, cited above.
It is a common circumstance under the Policy to find that the entire incorporation of a mark in a domain name, including a domain that adds a generic word, may be sufficient for a finding of confusing similarity. See, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. This consideration alone would be sufficient for a finding of confusing similarity.
But in addition, the disputed domain name adds the terms "modemnet" immediately after the term "tplink". These terms are clearly referable to the products for which the Complainant's mark is used – modems and networking products. As such, the addition of those terms is only more likely to reinforce confusion with the Complainant's mark. A similar conclusion was reached by the panel in TP-Link International Limited v. Gurdeeppal Singh, RLS, supra, in that case in relation to the addition of the terms "wifinet" to the term "tplink".
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden shifts to the respondent to come forward with evidence of such rights or legitimate interests. The Complainant in this case established a sufficient prima facie case through its arguments and evidence.
The Respondent has not rebutted this argument.
All the evidence in this case points against the Respondent having any rights or legitimate interests in the disputed domain name. The only potential connection, in the evidence, between the Respondent and the disputed domain name is suggested by the Respondent's own website. That website purports to offer the Complainant's products for sale and providing related support services. The Complainant says that the Respondent is attempting to generate revenue for itself by providing technical support services and links for Internet users to purchase the Complainant's products. The Complainant says that neither it, nor its related entity TP-Link Tech, have any relationship with the Respondent and have not authorized the Respondent to use its mark in the disputed domain name.
Further, this case does not meet the Oki Data criteria, as the Respondent does not sell only the Complainant's goods and services, and the website does not disclose the Respondent's relationship with the Complainant.
The Panel has no reason to doubt these claims. As such, there is a reasonable inference that the Respondent's conduct appears to be an attempt to deliberately create a deceptive impression that its website has a legitimate connection with the Complainant. Such conduct is inconsistent with having rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The final matter which the Complainant must establish is that the disputed domain name was registered, and is being used in bad faith. The Complaint makes only a brief argument in this respect. The Complainant claims that the Respondent has intentionally attempted to attract Internet users for commercial gain, and that the disputed domain name is identical or confusingly similar to its TP-LINK mark. These circumstances ones which paragraph 4(b)(iv) of the Policy indicates would support a finding of bad faith.
The Panel considers that the Respondent must have been aware of the Complainant's mark and registered the disputed domain name with an intent to unfairly exploit that mark.
The Complainant's mark appears to be arbitrary and fanciful and so is no one that the Respondent is likely to have chosen by accident. The Respondent is clearly advertising the Complainant's products for sale and so would have been well aware of the Complainant's mark. There are only two possible further conclusions from this evidence: Either the Respondent is actually providing the Complainant's products for sale or the Respondent's website is a sham. The evidence does not clearly support a finding either way on these alternatives.
Regardless, on either alternative, there would be circumstances to support a finding of bad faith. If the Respondent is actually offering the Complainant's products, then it has undertaken an unauthorized and confusing use of the Complainant's mark, incorporated in the disputed domain name, to attract Internet users.
If, alternatively, the Respondent's website is a sham, there is an even stronger case for a finding of bad faith. In this circumstance, the Respondent would equally have made a confusing use of the disputed domain name. Further, this circumstance would be one in which the Respondent had deliberately used the Complainant's trademark to perpetrate some type of fraud. Such a use would no doubt have the potential to damage the Complainant's business.
In either case, the Panel considers there is a reasonable inference that the Respondent was acting for some commercial gain. The Respondent's website relates to a commercial activity – the sale of the Complainant's products and providing related services. Taken with this, and on either of the alternatives set out above, there are circumstances set out in paragraph 4(b)(iv) of the Policy that would support a finding of bad faith.
As such, the Panel finds that the Complainant has established its case under 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, <tplinkmodemnet.net>, be transferred to the Complainant.
James A. Barker
Date: June 29, 2017