Emergency Essentials Holdings, LLC v. Abuse, Web.com
Claim Number: FA2102001931026
Complainant is Emergency Essentials Holdings, LLC (“Complainant”), represented by John P. Halski of Perkins Coie LLP, Washington, USA. Respondent is Abuse, Web.com (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emergencyessentials.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2021; the Forum received payment on February 4, 2021.
On February 12, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <emergencyessentials.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2021, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, as well as to the attention of postmaster@emergencyessentials.com. Also, on February 19, 2021, 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 March 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading marketer in the emergency preparedness and survival products industry.
Complainant holds a registration for the EMERGENCY ESSENTIALS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Reg. 3,571,178, registered February 10, 2009, and renewed January 3, 2019.
The domain name <emergencyessentials.com> was registered by Complainant on January 2, 1997, but inadvertently lapsed in October of 2020 and renewed by Respondent on January 3, 2021.
The domain name is substantively identical to Complainant’s EMERGENCY ESSENTIALS mark.
Respondent has not been commonly known by the domain name.
Respondent has never been associated or affiliated with Complainant.
Respondent is neither licensed nor otherwise authorized by Complainant to use the EMERGENCY ESSENTIALS mark.
Respondent does not use the domain name for any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Instead, Respondent employs the domain name to divert Internet traffic away from Complainant’s official website by hosting hyperlinks to other websites related to Complainant’s products.
Respondent presumably profits from this use of the domain name via receipt of click-through fees.
Respondent registered the domain name only after Complainant inadvertently allowed the registration to lapse.
Almost immediately after acquiring the domain name, Respondent began making multiple unsolicited offers to sell it to Complainant.
Respondent registered the domain name primarily for the purpose of selling it to Complainant.
Respondent lacks rights to and legitimate interests in the domain name.
Respondent’s registration and use of the domain name disrupts Complainant’s business.
Respondent employed a privacy service when registering the domain name.
Respondent knew of Complainant and its rights in the EMERGENCY ESSENTIALS mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
2. Respondent has no rights to or legitimate interests in respect of the domain name; and
3. the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
Complainant has rights in the EMERGENCY ESSENTIALS trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of thee mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for …[its mark]… demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <emergencyessentials.com> domain name is substantively identical to Complainant’s EMERGENCY ESSENTIALS mark, only differing by the addition of the generic Top Level Domain (“gTLD”) “.com,” which must be disregarded in our analysis. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested <emergencyessentials.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <emergencyessentials.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the EMERGENCY ESSENTIALS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Abuse, Web.com,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use the <emergencyessentials.com> domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead uses it to divert Internet traffic away from Complainant’s official website by hosting hyperlinks to other websites related to Complainant’s products. Complainant further alleges, again without objection from Respondent, that Respondent must be presumed to profit from this use of the domain name through the receipt of click-through fees. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018):
Respondent’s confusingly similar … domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is evident from the record before us that Respondent knew of Complainant and its rights in the EMERGENCY ESSENTIALS trademark when it registered the <emergencyessentials.com> domain name. This, without more, demonstrates Respondent’s bad faith in registering it. See, for example, iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018):
Respondent’s prior knowledge [of a UDRP complainant’s mark, and, therefore, its bad faith in registering a confusingly similar domain name] is evident … from Respondent’s use of its trademark[-]laden domain name to direct internet traffic to a website which is a direct competitor of Complainant.
It is also plain from the evidence that Respondent registered the domain name for the primary purpose of selling it to Complainant for a profit. This stands as proof of Respondent’s bad faith in registering and using it under Policy ¶ 4(b)(i), which recites in pertinent part:
4.[B] [T]he following circumstances … shall be evidence of the
registration and use of a domain name in bad faith:
(i) … you have acquired the domain name primarily for the purpose of selling … [it] … to the complainant who is the owner of the trademark … for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
Of significance in this regard is Complainant’s undenied contention that Respondent registered the <emergencyessentials.com> domain name only after Complainant inadvertently allowed its registration to lapse in 2020 after holding and using the domain name in commerce continuously since it was first registered in 1997. See, for example, BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO October 17, 2000) (finding bad faith registration and use where a respondent took advantage of a UDRP complainant’s inadvertent failure to renew a domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <emergencyessentials.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 24, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page