Freebies Publishing Inc. v. free & bies c/o Amanda Cliss
Claim Number: FA0709001075004
Complainant is Freebies Publishing, Inc. (“Complainant”), represented by Lynn
Carlisle, of Carlisle Communications Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freebies.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 14, 2007.
On September 10, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <freebies.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <freebies.com> domain name is identical to Complainant’s FREEBIES mark.
2. Respondent does not have any rights or legitimate interests in the <freebies.com> domain name.
3. Respondent registered and used the <freebies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Publishing Inc., has provided periodicals and books featuring information about
mail order offerings since 1977, including approximately six million copies of
a book series and over forty million distributed copies of Freebies Magazine.
Complainant held a registration for its FREEBIES mark with the United
States Patent and Trademark Office (“USPTO”) beginning in 1977 until it was
canceled on July 1, 2004. Complainant
has received significant coverage in the media over the last thirty years
including in national magazines like Family
Circle and on national television programs like Good Morning
Complainant also launched a website at the <freebies.com> domain name starting in 1999 and has maintained a staff to regularly update the content of the website. Complainant used its website to contract with over 80 regular vendors of free offers. Complainant grew the website located at the <freebies.com> domain name into a 30-page, viable, developing, well-trafficked site as evidenced by June 2007 statistics showing that the wesbite received over 42,000 unique hits a month.
Complainant has provided WHOIS database evidence showing that the disputed domain name transferred on July 5, 2007 from Complainant’s possession into the control of Respondent, free & bies c/o Amanda Cliss, without Complainant’s authorization or knowledge. Respondent changed the e-mail address Complainant previously associated with the disputed domain name and also redirected the DNS to point to a server within Respondent’s control.
The website located at the disputed domain name provides hyperlinks to third-party websites, including Complainant’s competitors, through which Respondent presumably generates click-through revenue. Further, the content of the wesbite which Respondent has located at the disputed domain name is similar in appearance to the content which Complainant had previously located there.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Policy ¶ 4(a)(i) does not require that Complainant hold a trademark registration to establish rights in the FREEBIES mark. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has provided sufficient evidence showing that it has used the FREEBIES mark since 1977. Further, the mark has been widely known and used in print, electronic, and television media. Complainant even held a USPTO registration for the mark up until 2004 and held the disputed domain name from 1999 until Respondent’s registration in 2007. The Panel finds that Complainant has adequately established its rights in the FREEBIES mark under Policy ¶ 4(a)(i) for the purposes of this domain name dispute only as the mark has acquired secondary meaning through its continuous and extensive use. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also Mgmt. Plus Enters. v. MPE Tech. Servs., FA 192746 (Nat. Arb. Forum Oct. 27, 2003) (“Complainant has established rights in the MPE mark through widespread use of the mark in commerce, in addition to its longstanding use of the <mpe.com> domain name prior to this dispute.”); see also Suburban Ostomy Supply Co. v. Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s continuous use in commerce and its prior registration of the [disputed] domain name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark pursuant to Policy ¶ 4(a)(i).”).
The disputed domain name incorporates Complainant’s entire mark and simply appends it with the generic top-level domain (“gTLD”) “.com”. The Panel notes that under Policy ¶ 4(a)(i), the mere addition of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. The Panel finds that the disputed domain name is identical to Complainant’s FREEBIES mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant bears the initial burden of establishing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant’s allegation that Respondent lacks rights and legitimate interests is sufficient to meet this burden and shift the burden to Respondent to show that such rights exist. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent failed to produce a Response in this proceeding. Pursuant to Policy ¶ 4(a)(ii), Respondent’s choice not to submit a Response permits the Panel’s presumption that Complainant’s allegations are true, specifically that Respondent lacks rights and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Although not required, the Panel will now examine the record to determine if Respondent holds rights or legitimate interests under Policy ¶ 4(c).
Although it appears that Respondent, “free & bies c/o Amanda Cliss,” could be commonly known by the <freebies.com> domain name, Respondent has provided no affirmative evidence showing that it is known by the disputed domain name. Even the other information provided in the WHOIS record reflects incorrect information, as evidenced by the contact phone and fax numbers connecting to a Domino’s Pizza delivery line. Additionally, Complainant did not authorize Respondent to use its mark. Therefore, the Panel finds that it is unable to find that Respondent has any rights or legitimate interests under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”).
Evidence shows that Respondent hijacked the disputed domain name from Complainant and placed a website located at the <freebies.com> domain name displaying hyperlinks to third-party websites, including Complainant’s competitors, through which Respondent generates click-through revenue. Nothing about Respondent’s conduct in obtaining or operating the disputed domain name is illustrative of a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by the Policy. The Panel finds cannot find rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is 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) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”).
The Panel concludes that Complainant has met its burden under Policy ¶ 4(a)(ii).
The website that Respondent displays at the disputed domain name contains hyperlinks to third-party websites, some of which offer services and products that compete with Complainant’s products and services. The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under ¶ 4(b)(iii), as Respondent intended to cause confusion and disrupt Complainant’s business and has done so. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Further, Respondent’s hijacking of the disputed domain name indicates bad faith registration and use under ¶ 4(b)(iii). Not only did Complainant previously hold the disputed domain name, but Respondent must have been aware of Complaint’s registration since it had to pose as Complainant to redirect the disputed domain name’s account information. The Panels finds Respondent’s conduct in hijacking and registering the disputed domain name representative of bad faith use and registration under the Policy. InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
Respondent uses the disputed domain name primarily for commercial gain by attracting Internet users to the website located at the disputed domain name displaying hyperlinks to third-party websites which generate click-through revenue. Further, the content on the website located at the disputed domain name is similar in appearance to that which Complainant previously located at the disputed domain name which causes Internet users further confusion as to Complainant’s affiliation with the disputed domain name. The Panel finds this activity representative of bad faith use and registration under ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
The Panel concludes that Complainant has met its burden under 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 <freebies.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 2, 2007
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