national arbitration forum

 

DECISION

 

Despair, Inc. v. R9 DomainGuard Proxy Service

Claim Number: FA1203001435300

 

PARTIES

Complainant is Despair, Inc. (“Complainant”), represented by Lawrence Kersten, Texas, USA.  Respondent is R9 DomainGuard Proxy Service (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <despair.net>, 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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2012; the National Arbitration Forum received payment on March 20, 2012.

 

On March 20, 2012, Enom, Inc confirmed by e-mail to the National Arbitration Forum that the <despair.net> 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 March 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2012 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@despair.net.  Also on March 22, 2012, 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 April 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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

The trademark/service marks on which the complaint is Despair®. Despair, Inc. is an ecommerce company that uses the mark to sell calendars, posters, postcards, note cards, framed art, clothing, mugs, laptop skins, mouse pads and beverage-ware. In the future, we also intend to sell video. Despair, Inc. also uses despair.com to offer commentary, contests, and interactive tools for fans to make motivational poster parodies.

 

            FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).  [All three elements of the Policy must be alleged and proved by the Complainant.  UDRP Para. 4(a).] [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages.  FORUM Supp. Rule 4(a).]

 

Despair, Inc is an e-commerce business that was founded in 1998 and uses the domain despair.com. Despair, Inc. filed for the Despair trademark on May 28, 1998 and was granted the mark October 24, 2000 (USPTO Registration No. 2398404). It filed for the Despair service mark on July 21, 1999 and was granted the mark on October 30, 2001 (USPTO Registration No. 2502720).

 

The disputed domain name is confusingly similar with the Despair, Inc.’s trademark since it includes the mark in its entirety. The only difference is the addition of the generic top-level domain, but several cases have found that gTLD does not affect the confusingly similar analysis under Policy ¶4(a)(i).

 

Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons: 

 

1) Respondent does not have a federal trademark registration for any mark that is in any way similar to the word Despair®;

2) Respondent is not commonly known by the Disputed Domain Name;

3) Complainant has not given Respondent permission to use Complainant’s Trademark as a domain name;

4) Respondent is using the Disputed Domain Name to point a website offering referrals to businesses owned by the Respondent as well as online advertisements via Google’s AdSense; and

5) Respondent is not using the disputed domain name in a legitimate non-commercial or fair use manner.

 

Respondent should be considered to have registered the domain in bad faith. In 2008 one of the founders of Despair, Inc. contacted the Respondent to see if he was interested in selling the domain. The Complainant indicated that he had a project for which hoped to use the domain. The Respondent said he was not interested in selling the domain and that “down the road it will be a fun property to develop,” but he then offered to lease the domain or “work together build something mutually beneficial.” 

 

Complainant took the Respondent at his word that he might develop the domain. But it has been over 3 years since that exchange and the Respondent has still not developed the domain other than to use it to link to two other business and sell ads via Google AdSense. Over the years, Despair, Inc. has spent over $3.5M in branding and advertising to build a brand associated with the Despair® mark, and the Respondent uses the domain to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of site.

 

In addition to the fact that he has not developed the domain, the fact that he offered to lease it to Despair, Inc. or to work together to build something mutually beneficial, indicates that he had no plans for the domain other than extract consideration in excess of his documented out-of-pocket costs. Naturally, Despair, Inc. could not develop a significant property with the domain based upon a lease. If it did and the property was successful, Complainant would simply be able increase the cost of the lease. Similarly, offering to work on something mutually beneficial, especially when he knew that the Complainant already had plans for the domain, is a way of gaining an interest in Despair, Inc. based solely on the fact that he registered a domain with Despair, Inc.’s mark.

 

Finally, the Complainant recently discovered that the Respondent has engaged in a pattern of registering domains that include others’ trademarks, service marks, or common names such as dallasstars.org, dallasstars.net, dallascity.com, deportation.com and crumple.com. Respondent is listed as the registrant, administrative contact, and technical contact for all of these domains, and all of the domains resolve to the same pages. In the past, the domains resolved to a directory that spawned web searches for different topics (e.g. Cigars), links to one of the Respondent’s businesses (sell.com), and online ads. Since 2010, all the sites resolve to a landing page that says the domain is “arriving soon,” included links to the Respondent’s other businesses, and online ads from Google’s AdSense.  Registering multiple domains that include others’ marks with no apparent intent to develop them is an indication of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

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."

 

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to cancel or transfer a domain name:

 

(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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant provides the Panel with evidence of Complainant’s trademark registrations with the USPTO for its DESPAIR mark (e.g., Reg. No. 2,398,404 filed May 28, 1998; registered Oct. 24, 2000).  The Panel finds Complainant’s USPTO trademark registrations sufficiently demonstrate Complainant’s rights in the DESPAIR mark under Policy ¶4(a)(i), dating back to the filing date of May 28, 1998.  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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).

 

Complainant claims Respondent’s <despair.net> domain name only differs from Complainant’s DESPAIR mark is the addition of the generic top-level domain (“gTLD”) “.net.”  The Panel concludes Respondent’s <despair.net> domain name is identical to Complainant’s DESPAIR mark pursuant to Policy ¶4(a)(i).  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark).

 

The Panel finds Policy ¶4(b)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).  Claimant has met that burden here.

 

Complainant claims Respondent is not permitted to use Complainant’s DESPAIR mark and Respondent does not own a federal trademark registration for any mark.  The registrant is listed as “R9 DomainGuard Proxy Service” in the WHOIS information, which is not similar to the <despair.net> domain name.  Respondent failed to submit a Response and did not provide evidence it is commonly known by the disputed domain name.  Based on this evidence, the Panel determines Respondent is not commonly known by the <despair.net> 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant claims Respondent uses the <despair.net> domain name to resolve to a website offering referrals to Respondent’s business and online advertisements.  Complainant provided screenshots of this website from several years ago, which has apparently since been updated.  Complainant also includes screenshots of the current resolving website, which contain hyperlinks that appear to be unrelated to Complainant.  Respondent’s prior and current 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 of the <despair.net> domain name under Policy ¶4(c)(iii).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)); see also 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).

 

The Panel finds Policy ¶4(b)(ii) satisfied.

 

Registration and Use in Bad Faith

The Panel finds the enumerated Policy ¶4(b) factors are not exhaustive but illustrative.  The totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). 

 

Complainant contacted Respondent three years ago about buying the disputed domain name. Respondent claimed it was developing a website for a non-competing use, but offered to lease the <despair.net> domain name to Complainant, which Complainant declined.  Complainant claims this offer to lease the disputed domain name is evidence of bad faith registration and use.  See Wake Forest Univ. v. Needham, FA 125751 (Nat. Arb. Forum Nov. 27, 2002) (finding bad faith pursuant to Policy ¶4(b)(i) where the panel found the respondent had proposed rental fees for use of the domain names in dispute).

 

Complainant contends Respondent has registered multiple domain names containing the marks of third parties; <dallasstars.net>, <dallasstars.org>, <dallascity.com>, <deportation.com>, and <crumple.com>.  Respondent does not dispute this fact.  No UDRP panel has made a determination regarding these domain names under the Policy.  However, this Panel still concludes there is sufficient evidence Respondent registered and uses the <despair.net> domain name as part of a bad faith pattern of registration under Policy ¶4(b)(ii).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶4(b)(ii)).

 

Complainant claims Respondent commercially benefits from the current and prior use of the <despair.net> domain name by creating confusion as to Complainant’s affiliation with the domain name.  Respondent apparently commercially benefits from the referrals to Respondent’s business and Respondent receives click-through fees from the hyperlink advertisements found on the resolving website.  The Panel determines Respondent registered and uses the <despair.net> domain name in bad faith under Policy ¶4(b)(iv) because Respondent is creating a likelihood of confusion and is attempting to profit from that confusion.  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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).

 

Finally, Respondent is using a so-called “Privacy service” to conceal its ownership of the domain name.  While this Panel can imagine circumstances where such steps are justifiable for a personal web site, this Panel cannot imagine such concealment being a bona fide business practice in the commercial context.  This alone raises the presumption of bad faith registration and use.

 

The Panel finds Policy ¶4(b)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <despair.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, April 24, 2012

 

 

 

 

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