The Complainant is TP-Link International Limited of Hong Kong, China, represented by LTL Attorneys LLP, United States of America (“United States”).
The Respondent is Gurdeeppal Singh, RLS of Nangal, India.
The disputed domain name <tplinkwifinet.net> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2016. On December 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2016, 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 January 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on January 31, 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.
The Complainant is an associated company of business of TP-Link Technologies, Co Ltd (“TP-Link Tech”). The business of TP-Link Tech is the manufacture and sale of computer network products. It was formed in 1996 and has traded as TP-Link since that time. Total worldwide group sales now exceed USD 1 billion. TP-Link Tech has a number of routes to market including third-party online retailers and bricks and mortar stores as well as a number of its own websites, which include a website at “www.tp-link.com”. This website provides information about the Complainant together with an online store at which the Complainant’s products, including a wide selection of its wi-fi routers, are available for purchase.
The Complainant is the owner of various registered trade marks for TP-LINK, the first of which was applied for in 2005. These marks are licensed to TP-Link Tech. Some of the Complainant’s trade marks are in a lightly stylized form. United States trade mark number 3,175,495 is a word only mark for TP-LINK registered on November 21, 2006, in International Class 9 for (amongst other goods) modems, optical fibre converters network switches, network hubs and routers.
The disputed domain name was registered by the Respondent on May 2, 2016. It points to a website, the home page of which contains a black banner at the top headed “TP-LINK ROUTER LOGIN”. Left of centre of the page, in large letters, is the word “tplinkwifi.net”. Beneath that, in a smaller font, is a paragraph which reads: “Build a fast, reliable network with our full range of home WiFi routers. Find the perfect wireless solution for sharing, streaming and gaming”. To the right of this paragraph is a photograph of a wireless router which has printed on it the words “TP-LINK”. Next to the router is a blue “Buy now” button. An address in California, United States is given as the contact address for the business. The general layout and presentation of the Respondent’s website is not the same as the Complainant’s website.
No response from the Respondent was received by the Complainant’s attorneys to a cease-and-desist letter sent by it on November 8, 2016, which set out the Complainant’s trade mark rights in TP-LINK and sought the transfer to the Complainant of the disputed domain name.
In support of its assertion that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights, the Complainant provides details of a number of its registered trade marks. These include United States trade mark number 3,175,495 for TP-LINK, details of which are set out above. It says that the TP-LINK trading style has been in use since at least 1996 and that its trade marks are used in connection with the sale of computer network interconnection hardware.
The Complainant says that the disputed domain name should be found to be confusingly similar to its TP-LINK trade marks because it wholly incorporates its trade mark. It refers to previous decisions under the Policy in support of this contention, including RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089. It says that the website to which the disputed domain name points, as described above, further exacerbates the confusing similarity by prominently featuring the Complainant’s TP-LINK trade marks.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It draws attention to the decision in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 in support of its contention that a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests at which point the burden of production shifts to the respondent to produce evidence that would indicate otherwise.
In addition, the Complainant says that the Respondent is not commonly known by the disputed domain name. It says that it has no relationship of any kind with the Respondent and that it has never authorized the Respondent to use the disputed domain name or any other domain name or trade mark associated with the Complainant. It also says that the Respondent’s use of the disputed domain name is commercial and not fair use because there is no legitimate connection between the Respondent and its use of the disputed domain name and the Complainant and its trade marks.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. It relies one of the non-exhaustive circumstances in which bad faith registration and use will be found, set out at paragraph 4(b)(iv) of the Policy. This indicates that one of the circumstances which will support a finding of bad faith registration and use of a domain name is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on the website.
The Respondent did not reply to the Complainant’s contentions.
Turning, first, to the Respondent’s failure to serve a response, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has established that it has rights in the trade mark TP-LINK. It has provided details of several TP-LINK trade marks it owns. Typically, ownership of a single mark by a complainant will be sufficient for these purposes. United States trade mark number 3,175,495 for TP-LINK registered on November 21, 2006, details of which are set out above, establishes rights by the Complainant in TP-LINK.
For the purposes of comparing the disputed domain name with the Complainant’s trade mark it has, as the Complainant says, been established by previous UDRP panel decisions that the gTLD suffix (“.net”) should be disregarded when assessing the degree of similarity between the disputed domain name and the Complainant’s trade mark.
The differences between the Complainant’s trade mark and the disputed domain name comprise, first, the lack of a hyphen between “tp” and “link” in the disputed domain name. The letters “tp” have no inherent meaning whereas “link” is a known word. The lack of a hyphen between these two different elements of the disputed domain name will not materially affect any perception of similarity; “tplink” is likely to be perceived by Internet users in essentially the same way as “tp-link”.
The second difference is the addition of “wifinet” following “tplink”. Members of the public who may be aware of the Complainant and its business, which includes the sale of routers and other networking products, could associate “wifinet” with WiFi networks, this being the form of communications network in which many of the Complainant’s products are used. As “wifinet” may be perceived as denoting a form of network associated with the Complainant’s products, the addition of this term is therefore likely to reinforce the association in the minds of Internet users between the Complainant and the disputed domain name. It therefore does not reduce the possibility of Internet users perceiving a connection between the disputed domain name and the Complainant.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that (as an individual, business, or other organisation) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The evidence submitted by the Complainant provides a strong prima facie case that the use to which the Respondent has put the disputed domain name is both illegitimate and commercial in character, namely that the Respondent seeks to derive commercial gain from misleadingly diverting consumers seeking the Complainant’s products to its website. As the Complainant has said, it is only required to make out a prima facie case that the Respondent lacks rights or legitimate interests at which point the burden shifts to the Respondent to produce evidence that would indicate otherwise. The panel in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, commented that “Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark), especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests, and since paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light”.
The Respondent failed to respond to the cease-and-desist letter sent by the Complainant’s representative on November 8, 2016, or to the Complaint. The Respondent has thereby declined to take the opportunities which were available to provide any evidence which might suggest that it has a right or legitimate interest in the disputed domain name, whether on the specific grounds referred to above or on any other basis.
In view of the difference in appearance between the Complainant’s and the Respondent’s websites, the Panel considered whether the Respondent might, unaware of the Complainant’s business, have established a bona fide business selling identical goods and services which were identically branded to those of the Complainant. However, there is no evidence to suggest that this is what has happened, the probability of this having occurred is extremely low and the consensus view of UDRP panels is that the Complainant is required only to prove its case on a balance of probabilities; see paragraph 4.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has put its case on bad faith registration and use briefly. It says that the Respondent’s conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy, namely that by its registration and use of the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or of products on his website.
The Panel agrees. The available evidence suggests strongly that the Respondent had the Complainant’s trade mark and repute in mind at the time it registered the disputed domain name. The coupling of the trade mark TP-LINK with a word descriptive of the form of communications systems in which many of the Complainant’s products are used is very unlikely to have been accidental. The only known use to which the disputed domain name has been put, that is for the creation of a website seemingly selling TP-LINK branded products evidently in order to suggest a connection with the Complainant, indicates that this was the most likely purpose for which the disputed domain name was purchased and establishes bad faith registration and use.
The Panel accordingly finds 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 <tplinkwifinet.net> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: February 13, 2017