national arbitration forum

 

DECISION

 

The RCS Network v. masssaveresidential.com Private Registrant / A Happy DreamHost Customer

Claim Number: FA1007001338260

 

PARTIES

Complainant is The RCS Network (“Complainant”), represented by Frank N. Gaeta, of Rich May, P.C., Massachusetts, USA.  Respondent is masssaveresidential.com Private Registrant / A Happy DreamHost Customer (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <masssaveresidential.com>, registered with NEW DREAM NETWORK, LLC.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2010.

 

On August 4, 2010, NEW DREAM NETWORK, LLC confirmed by e-mail to the National Arbitration Forum that the <masssaveresidential.com> domain name is registered with NEW DREAM NETWORK, LLC and that Respondent is the current registrant of the name.  NEW DREAM NETWORK, LLC has verified that Respondent is bound by the NEW DREAM NETWORK, LLC 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 August 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2010 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@masssaveresidential.com by e-mail.  Also on August 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 7, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" through submission of a Written Notice, as defined in Rule 1.  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.      Respondent’s <masssaveresidential.com> domain name is confusingly similar to Complainant’s MASS SAVE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <masssaveresidential.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, The RCS Network, is an online provider of educational services pertaining to the promotion of energy management and efficiency through consumer and contractor education.  Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its MASS SAVE mark (Reg. No. 3,136,287 issued August 29, 2006). 

 

Respondent, masssaveresidential.com Private Registrant / A Happy DreamHost Customer, registered the <masssaveresidential.com> domain name on April 22, 2010.  Respondent’s disputed domain name previously resolved to a website that appeared similar to Complainant’s official website and asked Internet users to enter their names and email addresses to receive further details about the “Great Appliance Exchange,” a program that was promoted by Complainant.  Upon entering their email addresses Internet users receive email messages from Respondent that lead to further pages of Respondent’s website that sell Respondent’s energy products.  Currently, Respondent’s disputed domain name is not connected with an active website.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its MASS SAVE mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 3,136,287 issued August 29, 2006).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Complainant contends that the <masssaveresidential.com> domain name is confusingly similar to Complainant’s MASS SAVE mark.  Complainant argues that the domain name contains its entire mark, absent the space between the terms, and merely adds the generic term “residential” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s MASS SAVE mark under Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights and legitimate interests in the <masssaveresidential.com> domain name under Policy ¶ 4(a)(ii).  Complainant is required to produce a prima facie case in support of its allegations.  Upon Complainant’s production of a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the domain name.  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)).  The Panel finds that Complainant has established a prima facie case, and the burden of proof has shifted to Respondent.  Due to Respondent’s failure to respond to these proceedings the Panel may assume that the allegations within the Complaint are true, unless clearly contradicted by the evidence on record.  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.”).

 

The WHOIS information for the <masssaveresidential.com> domain name identifies “masssaveresidential.com Private Registrant / A Happy DreamHost Customer” as the registrant.  Respondent has not come forward with any evidence to show that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).

 

Complainant alleges that Respondent previously used the disputed domain name as a ploy to gain Internet users’ names and email addresses that would enable Respondent to direct those Internet users to Respondent’s energy products that it sells through the disputed domain name.  Complainant submits screen shot evidence of the website showing the succession of email correspondence from Respondent to Internet users who have entered their email address at the <masssaveresidential.com> domain name.  The Panel finds that Respondent’s use of the disputed domain name to appear as though it was Complainant while asking Internet users to enter their names and email addresses so Respondent could eventually sell those users its energy guides and products 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).

 

Complainant also contends that Respondent does not currently have the disputed domain name connected with an active website.  Previous panels have determined that a respondent’s failure to make an active use of a confusingly similar domain name is evidence of respondent’s lack of rights and legitimate interests in the domain name undere Policy ¶ 4(a)(ii).  See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).  Therefore, the Panel finds that Respondent’s current failure to make an active use of the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).   

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.           

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent previously used the disputed domain name to maintain a website where Internet users were asked to enter their names and email addresses in order to receive email correspondence from Respondent which eventually led to Respondent’s attempt to sell energy products to those users.  The Panel finds that Respondent’s previous use of the disputed domain name to attract Internet users to its website where it sold instructional and energy products is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

Complainant further argues that Respondent currently does not have the <masssaveresidential.com> domain name connected with an active website.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.    

 

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 <masssaveresidential.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  September 7, 2010

 

 

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