T-Mobile USA, Inc. v. basaiah swamy / basava swamy
Claim Number: FA1903001836060
Complainant is T-Mobile USA, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is basaiah swamy / basava swamy (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <metropcs.online>, registered with NameCheap, Inc., and <metropcspayment.online> (collectively “Domain Names”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2019; the Forum received payment on March 27, 2019.
On March 27, 2019, GoDaddy.com, LLC and NameCheap, Inc. confirmed by e-mail to the Forum that the <metropcs.online> and <metropcspayment.online> domain names are registered with NameCheap, Inc. and GoDaddy.com, LLC, respectively, and that Respondent is the current registrant of the names. GoDaddy.com, LLC and NameCheap, Inc. have verified that Respondent is bound by the GoDaddy.com, LLC and NameCheap, Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@metropcs.online, postmaster@metropcspayment.online. Also on April 1, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 26 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist. On the same day, the Respondent sent a short communication to the Forum, summarized later in this decision.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, T-Mobile USA, is the third largest wireless service provider in the United States. Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 2,784,778 registered on November 18, 2003). Respondent’s <metropcs.online> domain name is identical to Complainant’s mark as the only difference is the addition of the “.online” generic top-level domain (“gTLD”), while the <metropcspayment.online> domain name is confusingly similar to Complainant’s mark it adds only the generic term “payment” and the “.online” gTLD.
Respondent lacks rights and legitimate interests in the <metropcs.online>
and <metropcspayment.online> domain names because Respondent
is not commonly known by the Domain Names and is not authorized or permitted to
use Complainant’s mark in any fashion. Additionally, Respondent fails to use
the Domain Names in connection to a bona fide offering of goods or
services or a legitimate noncommercial or fair use. Rather, Respondent uses
the Domain Names to pass off as Complainant, promote Complainant’s competitors,
and generate pay-per-click revenue. Further, Respondent uses the Domain Names
to promote potentially malicious executable software downloads. Finally,
Respondent attempted to sell the Domain Names to Complainant in response to
Complainant’s request for a voluntary transfer.
Respondent registered and uses the <metropcs.online> and <metropcspayment.online> domain names in bad faith because Respondent offered to sell the Domain Names to Complainant. Further, Respondent attempts to disrupt Complainant’s business by promoting Complainant’s competitors. Additionally, Respondent attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, endorsement, or affiliation of Respondent’s website. Moreover, Respondent uses the confusingly similar Domain Names to distribute potentially malicious executable software of unknown origin and purpose. Finally, Respondent had actual knowledge of Complainant’s mark and attempts to trade off the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Following the appointment of the Panel, Respondent sent an e-mail that stated, in its entirety
“Hi [name], We ready to close the websites and for domain parking, we need maintenance charges done then we will immediately submit the domain. Thank you.”
It is unclear whether the e-mail above amounted to the Respondent consenting to transfer the Domain Names or merely remove the websites. The Panel, in an exercise of caution, does not treat this e-mail as consent to transfer and will decide this proceeding on the basis of the Policy and Rules.
Complainant holds trademark rights for the METROPCS mark. Each of the Domain Names is confusingly similar to Complainant’s METROPCS mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the named entities which control the domain names at issue (in the case of <metropcs.online> basava swamy and in the case of <metropcspayment.online> basaiah swamy) are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the registrants for the Domain Names are related because: 1) the named respondents have the same last name and same phone number, 2) In communications with Complainant, Respondent has represented its ability to transfer both Domain Names, and 3) each of the websites to which the Domain Names resolve (“Respondent’s Websites”) purport to offer identical services, have similar fonts and appearances and operate under similar business models. This evidence and particularly the striking similarity of the Respondent’s Websites, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that the Domain Names would resolve to websites that offer identical services set out in a very similar manner.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for the remainder of the Decision.
Complainant has rights in the METROPCS mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that each of the Domain Names is confusingly similar to the METROPCS mark as they each incorporate the entire mark while adding the “.com” generic top-level domain (“gTLD”) and in the case of the domain name <metropcspayment.online> adding the generic term “payment”. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain);
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the METROPCS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “basaiah swamy / basava swamy” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names have resolved to websites advertising services under the METROPCS Mark, including photos of Complainant’s business locations and contain advertising links to Complainant’s competitors. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between June and October, 2018, Respondent had actual knowledge of Complainant’s METROPCS mark. Each of the Domain Names resolves to a website that contains photos of Complainant’s business locations and links and other material referring to Complainant’s competitors. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith by using the confusingly similar Domain Names to resolve to websites that imply a connection with Complainant (by referencing Complainant’s mark and containing photos of Complainant’s business locations) but promote (no doubt for commercial gain), Complainant’s competitors. Using a disputed domain name to promote a complainant’s competitors may evince bad faith under Policy ¶ 4(b)(iii). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Furthermore, attempting to pass of as a complainant for commercial gain may evince bad faith under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iii) and 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropcs.online> and <metropcspayment.online> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 28, 2019
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