GoTo Technologies USA, Inc. v. REDACTED FOR PRIVACY / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2206002001844
Complainant is GoTo Technologies USA, Inc. (“Complainant”), represented by Christopher Hoolehan of Day Pitney LLP, Massachusetts, USA. Respondent is REDACTED FOR PRIVACY / Privacy service provided by Withheld for Privacy ehf (“Respondent”), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gotomeeting.us.com> (“Domain Name”), registered with NameCheap, Inc..
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 participated in the mandatory CentralNic Mediation, and the mediation process was terminated on February 15, 2022.
Complainant submitted a Complaint to the Forum electronically on June 24, 2022; the Forum received payment on June 24, 2022.
On June 28, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <gotomeeting.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy” or “Policy”).
On June 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2022 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@gotomeeting.us.com. Also on June 30, 2022, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 2, 2022, 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 September 6, 2022, following review of the correspondence between Respondent and Forum documented later in this decision the Panel issued a Panel Order providing Respondent with (by September 13, 2022) the opportunity to file either a formal Response or a communication confirming that it was prepared to consent to the Panel issuing an order transferring the Domain Name to Complainant. No response to this order has been received.
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 to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, 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 Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, GoTo Technologies USA, Inc., offers communications-focused computer software. Complainant has rights in the GOTOMEETING mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,172,020 registered November 14, 2006). Respondent’s <gotomeeting.us.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the GOTOMEETING mark in its entirety and adds the “.us” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <gotomeeting.us.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the GOTOMEETING mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Name previously resolved to Complainant’s own website and currently resolves to a webpage bearing Complainant’s mark that encourages users to download software and possibly malware.
Respondent registered or uses the <gotomeeting.us.com> domain name in bad faith. Respondent registered the Domain Name in order to divert customers for commercial gain. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the GOTOMEETING mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. The Respondent sent a series of e-mails to Forum, with the relevant content being summarized below:
On July 12, 2022, the Respondent sent an email stating that it purchased the Domain Name in 2015 and has been using the Domain Name to conduct a security awareness program for its customers but that the Domain Name was not serving any content to users outside Respondent’s client base. Respondent then indicated that the impact of the transfer of the Domain Name on its business would be significant and asked Complainant if it was willing to purchase the Domain Name from it.
On July 13, 2022, following an e-mail from the Forum regarding the possibility of settlement of the matter Respondent sent an e-mail indicating that, in their view, they had provided sufficient information about their use of the Domain Name and had made reasonable efforts to negotiate a settlement.
On September 2, 2022, following the appointment of the Panel, Respondent sent an e-mail indicating that it wished to file a formal Response and that it had previously agreed to transfer the Domain Name to Complainant, but baulked at being requested to “sign additional documents”.
As noted under the Procedural History section, following the appointment of the Panel Respondent was provided with the opportunity to either consent to the transfer of the Domain Name, without signing “additional documents” or file a formal Response. Respondent did not take up either opportunity. The Panel has treated the e-mails sent by the Respondent as an informal response, noting that such material is unsworn and unsupported by any documentary evidence.
Complainant holds trademark rights for the GOTOMEETING mark. The Domain Name is identical to Complainant’s GOTOMEETING mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
Complainant has rights in the GOTOMEETING mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 3,172,020 registered November 14, 2006). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <gotomeeting.us.com> domain name is identical to the GOTOMEETING mark as it consists of the GOTOMEETING mark and adds the “.us.com” TLD. Adding a TLD to a wholly incorporated trademark does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. 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 Name 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 and the Respondent’s informal Response, consisting of an unsworn e-mail without evidence does not show that it has rights or legitimate interests in the Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the GOTOMEETING 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 “REDACTED FOR PRIVACY / Privacy service provided by Withheld for Privacy ehf” as registrant 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 Name in accordance with Policy ¶ 4(c)(ii).
The Respondent has provided an explanation as to the use of the Domain Name but such an explanation is unsupported by any documentary evidence and inconsistent with the actual documentary evidence of use provided in the Complaint. Complainant’s evidence is that at two separate times prior to the commencement of the proceeding the Domain Name made reference to the Complainant, once by resolving to Complainant’s official website and once by resolving to a webpage featuring Complainant’s GOTOMEETING mark and inviting users to download software. In circumstances where Respondent has provided no explanation for those particular uses of the Domain Name, or any other documentary evidence establishing any rights to the Domain Name, the use of the Domain Name to redirect to the Complainant’s website (or a website featuring Complainant’s mark), potentially to pass itself off as Complainant or as part of some other scheme to establish trust in the Domain Name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Google LLC v. Tim Sales, FA 1363660 (Forum Jan. 31, 2018) (“[T]he Panel finds that Respondent is using the <googlesalessupport.com> domain name to redirect Internet users to Complainant’s website and finds that Respondent lacks rights and legitimate interests in the domain name.”).
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 Name, December 17, 2015, Respondent had actual knowledge of the Complainant and its GOTOMEETING mark as the Domain Name has resolved to Complainant’s website at www.goto.com/meeting. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the Domain Name in bad faith by attempting to pass itself off as Complainant for Respondent’s commercial gain. In the absence of any alternative reasonable explanation and on the balance of probability, the Panel considers that the most likely explanation for Respondent’s actions is that the Domain Name was registered as part of a scheme to trade off the goodwill of Complainant’s GOTOMEETING mark for Respondent’s commercial gain, such as website designed to take advantage of any confusion between the Complainant and the Respondent to encourage the download of malicious software. The use of the Domain Name prior to the commencement of the proceeding is simply part of that scheme (to pretend that Respondent is connected to Complainant). This amounts to bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
The Panel while noting that the Policy only requires that a complainant show that a respondent registered or used a domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gotomeeting.us.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 16, 2022
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