national arbitration forum

 

DECISION

 

Russell Frey d/b/a edHelper v. Eighty Business Names c/o Domain Administrator

Claim Number: FA0911001293862

 

PARTIES

Complainant is Russell Frey d/b/a edHelper (“Complainant”), represented by Clifford D. Hyra, Virginia, USA.  Respondent is Eighty Business Names c/o Domain Administrator (“Respondent”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <edhelpercom.com>, registered with Rebel.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically November 10, 2009; the National Arbitration Forum received a hard copy of the Complaint November 10, 2009.

 

On November 11, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <edhelpercom.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name.  Rebel.com verified that Respondent is bound by the Rebel.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 2009, 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 postmaster@edhelpercom.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <edhelpercom.com>, is confusingly similar to Complainant’s EDHELPER mark.

 

2.      Respondent has no rights to or legitimate interests in the <edhelpercom.com> domain name.

 

3.      Respondent registered and used the <edhelpercom.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Russell Frey d/b/a edHelper, has provided products to assist educators via its website resolving from its <edhelper.com> domain name since 2000.  On May 24, 2005, the United States Patent and Trademark Office (“USPTO”) issued a registration (Reg. No. 2,955,044) to Complainant for the mark.

 

On May 5, 2004, a third party registered the <edhelpercom.com> domain name and as of May 8, 2009, the disputed domain name was still registered to the third party.  As of May 27, 2009, Respondent, Eighty Business Names c/o Domain Administrator, held the registration of the <edhelpercom.com> domain name.  The disputed domain name displays links to third parties, some of whom are Complainant’s competitors.

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Preliminary Issue: Relevant Date of Respondent’s Registration

 

The <edhelpercom.com> domain name was originally registered May 4, 2004; however, Complainant contends that Respondent acquired the <edhelpercom.com> domain name in late May 2009.  On May 4, 2004, the disputed domain name was registered to a third party.  As of May 8, 2009, that third party still held the registration.  Sometime between May 8 and May 27, 2009, Respondent acquired the disputed domain name.  The Panel finds that the relevant date Respondent registered the disputed domain name for the purposes of the Policy is when Respondent acquired the disputed domain name May of 2009.  See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (“[O]ne only needs to trace the registration date back to the most recent transfer instead of the original registration.”); see also BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it.).

 

Identical to and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the EDHELPER mark (Reg. No. 2,955,044 issued May 24, 2005) with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).  The Panel further finds that registration of the mark in the country of Respondent’s residence is not necessary for Complainant to establish rights under Policy ¶ 4(a)(i).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). 

 

The <edhelpercom.com> domain name contains Complainant’s EDHELPER mark followed by the suffix “com,” a common generic top level domain (“gTLD”), and the gTLD “.com.”  The Panel finds that the disputed domain name takes advantage of a common typing error of omitting the period between the second and top-level domains.  Additionally, the addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i).  The Panel further finds that the only distinctive characteristic of the disputed domain name is Complainant’s mark.  Therefore, the Panel finds that the <edhelpercom.com> domain name is confusingly similar to Complainant’s EDHELPER mark under Policy ¶ 4(a)(i).  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <edhelpercom.com> domain name.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <edhelpercom.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the EDHELPER mark, and the WHOIS information identifies Respondent as “Eighty Business Names c/o Domain Administrator.”  Thus, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).

 

Respondent is using the <edhelpercom.com> domain name to provide links to third-party websites offering credit card services in direct competition with Complainant.  Respondent’s use of a domain name that is confusingly similar to Complainant’s EDHELPER mark to redirect Internet users interested in Complainant’s services to websites that offer competition for those services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); 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).

 

Additionally, typosquatting occurs when a respondent purposefully includes typographical errors in the domain name to divert Internet users who commit the typographical error of which the domain name seeks to take advantage.  The <edhelpercom.com> domain name takes advantage of Internet users who omit the period before the gTLD “.com” at the end of the domain name.  The Panel finds that Respondent engaged in typosquatting by adding the suffix “com” to the end of Complainant’s mark.  This is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the <edhelpercom.com> domain name to resolve to a website containing links to third-party websites, some of which directly compete with Complainant.  The Panel finds that Respondent is using the disputed domain name to disrupt Complainant’s business by diverting Internet users to Complainant’s competitors.  This evidence supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Under such use, the Panel is permitted to make an inference that Respondent receives click-through fees for diverting Internet users to third-party websites.  Because Respondent’s domain name is confusingly similar to Complainant’s EDHELPER mark, Internet users accessing Respondent’s <edhelpercom.com> domain name may become confused as to Complainant’s affiliation with the resulting website.  The Panel therefore finds that Respondent’s use of the <edhelpercom.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Furthermore, the Panel finds that Respondent’s typosquatting is evidence that Respondent registered and is using the <edhelpercom.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <edhelpercom.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  December 30, 2009.

 

 

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