national arbitration forum

 

DECISION

 

Alliance Data Systems Corporation v. eHostPros.com / Domain Registrar

Claim Number: FA1110001411187

 

PARTIES

Complainant is Alliance Data Systems Corporation (“Complainant”), represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA.  Respondent is eHostPros.com / Domain Registrar (“Respondent”), represented by Paul Murphy of Paul Murphy and Associates Lawyers, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alliancedatadirect.com>, registered with eNom, Inc.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2011; the National Arbitration Forum received payment on October 12, 2011.

 

On October 13, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <alliancedatadirect.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 October 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@alliancedatadirect.com.  Also on October 13, 2011, 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 November 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <alliancedatadirect.com> domain name is confusingly similar to Complainant’s ALLIANCEDATA mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Alliance Data Systems Corporation, uses its ALLIANCEDATA mark in connection with various business, financial, advertising and direct marketing services. Complainant has registered its mark with the United States Patent and Trademark Office (“USPTO”):

Reg. No. 3,224,452  registered April 3, 2007 &

Reg. No. 3,224,453  registered April 3, 2007.

 

Respondent, eHostPros.com / Domain Registrar, registered the <alliancedatadirect.com> domain name on April 11, 2008. The disputed domain name resolves to Respondent’s own commercial website that offers direct marketing services that compete with Complainant’s.

 

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

 

Complainant argues that it has rights in the ALLIANCEDATA mark because of its USPTO trademark registrations:

Reg. No. 3,224,452  registered April 3, 2007 &

Reg. No. 3,224,453  registered April 3, 2007.

As determined in Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), a complainant can conclusively establish its rights in a mark through registration with the USPTO. The Panel accordingly finds that Complainant has shown adequate evidence of its rights in the mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <alliancedatadirect.com> domain name consists of Complainant’s mark followed by the generic term “direct” and the generic top-level domain (“gTLD”) “.com,” which indicates that the disputed domain name is confusingly similar to Complainant’s mark. Past panels have previously established that neither the addition of a generic term nor a gTLD affects a mark substantially enough to prevent a finding of confusing similarity. See 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); 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 holds Complainant has proven Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires only that Complainant make a prima facie case before the burden then shifts to Respondent to demonstrate rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has presented a prima facie case in these proceedings. Due to Respondent’s failure to respond to Complainant’s allegations against it, the Panel may assume the allegations are true and conclude that Respondent lacks rights and legitimate interests in the disputed domain name. See 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.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence against the Policy ¶ 4(c) factors to determine whether Respondent has rights and legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant contends that Respondent operates no other business or organization under the name “Alliance Data.” The WHOIS information for the disputed domain name lists the registrant as “eHostPros.com / Domain Registrar,” which suggests no apparent connection between Respondent and the disputed domain name. The Panel finds that the allegations and evidence on record supports a conclusion that Respondent is not commonly known by the <alliancedatadirect.com> domain name and accordingly lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant contends that Respondent’s <alliancedatadirect.com> domain name directs Internet users to Respondent’s commercial website that offers services that compete with the direct marketing services that Complainant offers. Complainant asserts that offering these directly competing services under Complainant’s mark at the disputed domain name is neither a bona fide offering of goods or services according to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

The Panel finds Complainant has proven Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Although Complainant makes no specific allegations under Policy ¶ 4(b)(iii), Complainant does argue that Respondent is a competitor of Complainant’s who started a competing business in Australia that offers the same services as Complainant under both Complainant’s name and ALLIANCEDATA mark. Complainant contends that Respondent, as a competitor, registered and uses the <alliancedatadirect.com> domain name in bad faith specifically to disrupt Complainant’s business by diverting intending customers from Complainant’s web page to Respondent’s. The Panel agrees with Complainant and finds bad faith under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant alleges that Respondent uses Complainant’s mark and the <alliancedatadirect.com> domain name to intentionally attract Complainant’s consumers to Respondent’s website, create a likelihood of confusion regarding the relationship between Complainant and Respondent, and then profit from these diverted consumers. The Panel finds that Respondent’s efforts to trade on Complainant’s goodwill for Respondent’s own commercial gain demonstrates bad faith according to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).     

 

Complainant argues that Respondent first had constructive notice of Complainant’s rights to the ALLIANCEDATA mark because of Complainant’s federal trademark registrations and the fame and recognition that Complainant enjoys. Complainant also asserts, however, that Respondent had actual notice of Complainant and its rights because Respondent previously worked with a company in Australia that was acquired by Complainant. While the Panel finds that constructive knowledge is not sufficient to support a finding of bad faith, the Panel finds in this case that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel thus concludes that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). 

 

The Panel finds Complainant has proven 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 <alliancedatadirect.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  November 22, 2011

 

 

 

 

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