RingCentral, Inc. v. Ruben Garcia
Claim Number: FA1001001301347
Complainant is RingCentral, Inc. (“Complainant”), represented by Brody Stout, of CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ringcenteral.com>, registered with Fabulous.com Pty Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 5, 2010.
On January 5, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <ringcenteral.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 January 8, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 28, 2010 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@ringcenteral.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <ringcenteral.com> domain name is confusingly similar to Complainant’s RING CENTRAL mark.
2. Respondent does not have any rights or legitimate interests in the <ringcenteral.com> domain name.
3. Respondent registered and used the <ringcenteral.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RingCentral,
Inc., founded in 1991, offers virtual business phone systems to small and
mid-sized businesses with customers located worldwide. Complainant began offering these services
under the RING CENTRAL mark on February 14, 1994. Since that time, Complainant has continuously
used the RING CENTRAL mark and has spent thousands of dollars in advertisement
and promotion of this mark on television, print media, and the Internet. Complainant holds several registrations of
the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,302,115 issued October
2, 2007, filed April 27, 2006).
Respondent, Ruben Garcia,
registered the <ringcenteral.com> domain name on January
17, 2006. The disputed domain name
resolves to a website that displays hyperlinks to third-party websites, some of
which directly compete with Complainant.
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.
Complainant’s rights in the RING CENTRAL mark are two-fold. First, the Panel finds that Complainant has established rights in the RING CENTRAL mark under Policy ¶ 4(a)(i) as of April 27, 2006 through its several registrations of the mark with the USPTO (e.g., Reg. No. 3,302,115 issued October 2, 2007, filed April 27, 2006) because the relevant date on which Complainant establishes rights is the filing date of the application for federal registration. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
However, in that Respondent’s registration date of January 17, 2006 for the disputed domain name predates Complainant’s filing date of April 27, 2006, the Panel finds that a registration of the mark is unnecessary to establish predating rights in the mark under Policy ¶ 4(a)(i) provided that Complainant can establish common law rights in the mark through a sufficient showing of secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant began offering
its services under the RING CENTRAL mark on February 14, 1994. Since that time, Complainant has continuously
used the RING CENTRAL mark and has spent thousands of dollars in advertisement
and promotion of this mark on television, print media, and the Internet. The Panel finds that Complainant has
sufficiently established secondary meaning in the RING CENTRAL mark. The Panel further finds that Complainant has
established common law rights in the RING CENTRAL mark under Policy ¶
4(a)(i) as of February 14, 1994, which predates
Respondent’s registration date of January 17, 2006 for the disputed
domain name. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc.,
FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant
established common law rights in the mark through continuous use of the mark
since 1995 for the purpose of Policy ¶ 4(a)(i)); see also
Respondent’s <ringcenteral.com>
domain name contains a misspelling of Complainant’s RING CENTRAL mark and adds
the generic top-level (“gTLD”) “.com.”
The Panel finds that the <ringcenteral.com>
domain name is confusingly similar to Complainant’s RING CENTRAL mark under
Policy ¶ 4(a)(i) because neither the misspelling of Complainant’s mark nor the
addition of the gTLD sufficiently distinguishes the disputed domain name from
Complainant’s mark. See Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not
remove the respondent’s domain names from the realm of confusing similarity in
relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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).”). Although Respondent has not alleged that it has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).
The WHOIS information for the <ringcenteral.com> domain name lists “Ruben Garcia” as the registrant, which does not indicate that Respondent is commonly known by the disputed domain name. Furthermore, Respondent has not provided any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Therefore, the Panel finds that Respondent is not commonly known by the <ringcenteral.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <ringcenteral.com> domain name resolves to a website that displays hyperlinks to third-party websites, some of which directly compete with Complainant. The Panel presumes, as does Complainant, that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)).
Finally, the Panel
finds that Respondent is engaged in typosquatting because Respondent’s
confusingly similar <ringcenteral.com>
domain name takes advantage of a
common misspelling of Complainant’s RING CENTRAL mark. Therefore, the Panel finds that Respondent’s
engagement in typosquatting is further evidence that Respondent lacks rights
and legitimate interests in the <ringcenteral.com>
domain name under Policy ¶ 4(a)(ii). See Microsoft
Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the <ringcenteral.com> domain name on January 17, 2006, the
disputed domain name has resolved to a website that features competing
hyperlinks. The Panel finds that
Respondent’s use of the disputed domain name disrupts Complainant’s
business. The Panel further finds that
such a disruption constitutes bad faith registration and use under Policy ¶
4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v.
The Panel finds that Respondent’s use of the confusingly
similar <ringcenteral.com>
domain name creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name. The Panel
further finds that Respondent is commercially gaining from this likelihood of
confusion through its presumed receipt of click-through fees, which is evidence
of bad faith registration and use under Policy ¶ 4(b)(iv). See
Finally, the Panel finds that Respondent’s aforementioned engagement in typosquatting is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ringcenteral.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 17, 2010
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