Xcentric Ventures, LLC d/b/a www.RipoffReport.com v. Report a Rip Off, Inc.
Claim Number: FA1012001363406
Complainant is Xcentric Ventures, LLC d/b/a www.RipoffReport.com (“Complainant”), represented by David Gingras, Arizona, USA. Respondent is Report a Rip Off, Inc. (“Respondent”), represented by Richard Goddeau, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reportaripoff.net>, registered with Network Solutions, LLC.
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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2010; the National Arbitration Forum received payment on December 14, 2010.
On December 14, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <reportaripoff.net> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2011 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@reportaripoff.net. Also on December 17, 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.
A timely Response was received and determined to be complete on December 29, 2010.
On January 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is holder of the two following trademark registrations registered with the USPTO:
Reg. No. 2,958,949 (filed November 21, 2001; registered July 7, 2005, RIPOFF REPORT
Reg. No. 2,824,390 (filed November 21, 2001; registered March 23, 2004, DON'T LET THEM GET AWAY WITH IT.
The Complainant asserts that the domain name <reportaripoff.net> is substantially identical and confusingly similar to the Complainant’s trademark. The name incorporates the entirety of Complainant’s mark and the only difference is the inclusion of one letter (‘a’) and the reverse order of the words from “ripoff report” to “report [a] ripoff”.
The disputed domain name has been used to impersonate the Complainant’s official site and to violate the Complainant’s copyright and trademark rights.
The Complainant has never authorized the Respondent to use its “RIPOFF REPORT” or “RIPOFF REPORT” trademarks, nor has it authorized Respondent to use its “DON’T LET THEM GET AWAY WITH IT” mark. Moreover, the Respondent is not commonly known by the name <reportaripoff.net>.
The Respondent has attempted to use a virtually identical domain name to confuse website viewers, divert traffic, and to profit from selling paid advertising links (every page on Respondent’s site includes paid Google ads) which constitutes bad faith under the Policy.
B. Respondent
“Report A Rip-off”, is not a conflicting name, nor is it a violation of the Complainant’s trademark or copyright. The disputed website is a PHP clone script. There are no laws governing PHP clone scripts, development of such, and the sale and distribution of such. In addition, “Report A Ripoff” uses its own technology, SEO technology, and its own databases, report fields, RSS technology, Directory technology, Search Engine listings capabilities, which are not the same technology used on the Complainant’s website.
The Complainant, Xcentric Ventures, LLC, operates a website from its <ripoffreport.com> domain name which provides a consumer reporting forum for Internet users. The Complainant’s predecessor-in-interest registered the RIP-OFF REPORT mark with the United States Patent and Trademark Office (USPTO) on June 7, 2005 (Reg. No. 2,958,949). The Complainant was assigned rights in its RIP-OFF REPORT mark on September 21, 2006.
The Respondent’s <reportaripoff.net> domain name was registered on November 5, 2010 and resolves to a website providing services that are nearly identical to that of the 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."
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.
The Complainant has stated that the Respondent, as represented by Mr. Richard Goddeau, is not the actual Respondent but should be considered a third party. However, there is nothing in the file to suggest that the Response is not coming from the Respondent, or at least from an authorized representative. This Panel sees no reason not to accept the Response as originating from the Respondent. Further, under the Rules and the Supplemental Rules, this Panel is not required to request any proof of authorization. The Panel will therefore consider the Response and all the documents on file.
It appears that the Respondent has fundamentally misunderstood the nature of the domain name dispute resolution procedure under the Policy. The issue here is not the website itself linked to the disputed domain name or the technology behind that website, rather, this procedure was create to combat typical cases of cyber piracy with regard to registered domain names. Thus, this Panel will only consider the complaint insofar as to see whether the three criteria under the Policy are met. Other issues, for which a conventional Court is the more appropriate forum, will not be considered at all.
Previous Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. See e.g. Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) or, Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”). This Panel finds that the submitted example of registration clearly establish the Complainant’s rights in the mark RIP-OFF REPORT. It is therefore unnecessary to further investigate the common law rights claimed in this mark although the Panel notes that no particular evidence of this nature has been submitted by the Complainant.
The registered trademark of the Complainant is incorporated in its entirety in the disputed domain name. The Panel concludes that the addition or, as in this case, the omission of hyphens is irrelevant under the Policy 4(a)(i). Further, the inclusion of the letter “a” and the reverse order of the words are not sufficient to distinguish the disputed domain name from the Complainant’s trademark. See e.g. Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to the complainant's EASYJET mark and therefore that they are confusingly similar); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark). The Panel has also noted that the Respondent seems to not distinguish between rip-off and ripoff itself.
Finally, the generic top level domain is irrelevant for the assessment of whether the disputed domain name is confusingly similar to the trademark. See 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 thus finds that the first element of the Policy has been fulfilled.
Along with the majority of Panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain names at issue. See Document Technologies, Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); 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.”).
The Complainant has asserted that the disputed domain name has been used to impersonate the Complainant’s official site and to violate the Complainant’s copyrights and trademark rights. Moreover, the Respondent has no authorization to use the Complainant’s registered trademarks RIPOFF REPORT or DON’T LET THEM GET AWAY WITH IT!. Further, the Complainant has asserted that the Respondent is not commonly known by the name <reportaripoff.net>.
Under the Policy, legitimate interests in a domain name may be demonstrated by the Respondent by showing that:
(1) Before any notice of the dispute Respondent used, or made preparations to use, the domain name in connection with a bona fide offering of goods or services;
(2) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(3) Respondent is making legitimate, non-commercial and fair use of the domain name without intent of commercial gain or to misleadingly divert consumers or to tarnish the trademarks at issue.
The Respondent has offered no evidence to support a finding of legitimate interests. Rather, the reasons for the registration of the disputed domain name seem to originate from a dispute that goes far beyond the scope of assessment under the Policy.
The only information to support the Respondent is the WHOIS information. However, the Respondent has not provided any evidence which clarifies whether there exists such a company if so, at which time it was incorporated, 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 City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Moreover, the Complainant contends that the disputed domain name has been used to impersonate the Complainant’s own website, submitting examples of the website of the Complainant and the extract from the website of the Respondent, which feature identical information. The Respondent has asserted that the technology supporting the website differs entirely from that of the Complainant.
The Respondent’s assertions relate mostly to the content of the website and the technology and reasons for setting up the website linked to the domain name. These assertions do not constitute a legitimate interest or a bona fide offering of goods or services.
In light of the fact that there has been no evidence to show that the Respondent is commonly known by the disputed domain name, or any demonstrated bona fide offering of goods or services, by the Respondent the Panel finds that the second element of the Policy is fulfilled.
The Complainant has asserted that the Respondent has virtually copied the Complainant’s website and domain name to confuse website viewers, divert traffic, and to profit from selling paid advertising links. Moreover, the website includes the registered trademarks of the Complainant. When reviewing the website linked to the disputed domain name, this Panel agrees with the Complainant. Previous panels have found such use and registration to be in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The assertions of the Complainant is not contradicted by the Respondent per se. Rather, the information submitted by the Respondent suggests that the domain name and the website linked thereto were set up as a means to counteract the Complainant’s previous acts against the Respondent.
Past Panels have held that the registration and use of a confusingly similar disputed domain name to operate a website that contains false and negative statements about a complainant is in bad faith under Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website). Consequently, this Panel finds the Respondent’s registration and use of the confusingly similar disputed domain name constitute bad faith under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reportaripoff.net> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: January 18, 2011
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