Batteries Plus, LLC v. Jason Rager / Paydues Inc.
Claim Number: FA1112001418065
Complainant is Batteries Plus, LLC (“Complainant”), represented by Dean C. Eyler of Gray, Plant, Mooty, Mooty & Bennett, P.A., Minnesota, USA. Respondent is Jason Rager / Paydues Inc (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <batteriesplusfranchise.org>, registered with GoDaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2011; the National Arbitration Forum received payment on December 5, 2011.
On December 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <batteriesplusfranchise.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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@batteriesplusfranchise.org. Also on December 9, 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 January 9, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <batteriesplusfranchise.org> domain name is confusingly similar to Complainant’s BATTERIES PLUS mark.
2. Respondent does not have any rights or legitimate interests in the <batteriesplusfranchise.org> domain name.
3. Respondent registered and used the <batteriesplusfranchise.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Batteries Plus, LLC, is a national provider of retail battery sales throughout many locations across the United States. Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,697,440 registered June 30, 1992) for the BATTERIES PLUS mark. Complainant uses the mark as the name for its retail storefronts and as its primary domain name, <batteriesplus.com>.
Respondent, Jason Rager / Paydues Inc., registered the disputed domain name on July 7, 2011. The disputed domain name resolves to a website that is set-up to deceive Internet users into providing personal information in a classic phishing scheme.
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 contends that it has established its rights in the BATTERIES PLUS mark by registering it with the USPTO (e.g., Reg. No. 1,697,440 registered June 30, 1992). Complainant has submitted sufficient evidence in the form of trademark certificates to verify that it is the owner of the registrations. The Panel finds that Complainant has established its rights in the BATTERIES PLUS mark under Policy ¶ 4(a)(i) by registering it with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant also contends that Respondent’s <batteriesplusfranchise.org> domain name is confusingly similar to its BATTERIES PLUS mark. The disputed domain name includes the entire mark while removing the space between terms and adding the generic top-level domain (“gTLD”) “.com,” along with the generic term “franchise.” The Panel finds that the disputed domain name’s distinctive characteristic is still Complainant’s mark, and, therefore, the Panel determines that Respondent’s disputed domain name is confusingly similar to Complainant’s BATTERIES PLUS mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has established each element of Policy ¶ 4(a)(i).
Complainant has successfully shifted the burden of proof to Respondent by making, what the Panel finds to be, a prima facie case against Respondent, indicating that it lacks rights or legitimate interests in the disputed 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)). Because Respondent has failed to file a response in this matter, the Panel may accept all of Complainant’s allegations as fact, due to the lack of opposing evidence. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel will still examine the entire record before making any determinations regarding Respondent’s rights or legitimate interests in the disputed domain name in accordance with the factors listed in Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Respondent has provided no evidence to support a finding contrary to Complainant’s allegations. The WHOIS information identifies the registrant of the disputed domain name as “Jason Rager/ Paydues Inc.” Based upon the WHOIS information and the complete lack of contradicting evidence on record, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 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 also alleges that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website that is set up to procure personal information from Internet users that arrive at the site. Complainant submitted screen shots of the website, which verify that Respondent is using the site to phish for personal information. Respondent uses Complainant’s mark prominently on the website and purports to be a franchise agent for Complainant in an attempt to pass itself off as an employee or representative of Complainant. Previous panels have determined that using a website to run a phishing scheme in this fashion does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) because attempting to pass itself off as Complainant to fraudulently procure information from Internet users clearly falls outside such uses.
The Panel finds that Complainant has established each element of Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has registered and is using the disputed domain name for its own commercial gain demonstrating bad faith. Respondent’s disputed domain name resolves to a website offering an application. Internet users arrive at the website and are asked to fill out an application for a Batteries Plus franchise. Complainant claims that Respondent is selling the information it gleans from Internets users for its own commercial gain. Based upon this use, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent registered and is using the disputed domain name for its own commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith. Respondent resolves the disputed domain name to a website that displays Complainant’s mark prominently along with information about becoming a franchisee of Complainant’s. Internet users that arrive at the website are asked to provide personal information to process and complete that franchise application. Respondent is neither authorized by Complainant to offer franchisee services nor is it authorized to use the mark in support of those services. The Panel concludes that Respondent is trying to pass itself off as Complainant or a representative of Complainant’s with the end goal of fraudulently procuring personal information. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
The Panel finds that Complainant has established each element of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <batteriesplusfranchise.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 10, 2012
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