Sell My Timeshare Now, LLC v. david wolf
Claim Number: FA1203001436634
Complainant is Sell My Timeshare Now, LLC (“Complainant”), represented by Courtni E. Thorpe of Baker & Hostetler LLP, Ohio, USA. Respondent is david wolf (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sellmytimesharenowscam.com>, registered with GoDaddy.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2012; the National Arbitration Forum received payment on March 27, 2012.
On March 28, 2012, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <sellmytimesharenowscam.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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@sellmytimesharenowscam.com. Also on March 29, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following submissions.
1. Complainant has used the SELL MY TIMESHARE NOW mark since 2003 to promote and market its timeshare advertising service;
2. Complainant’s SELL MY TIMESHARE NOW mark is widely recognized by consumers as being related to online timeshare resale and rental services;
3. Respondent’s disputed domain name is confusingly similar to Complainant’s SELL MY TIMESHARE NOW mark;
4. Respondent is not commonly known by the disputed domain name;
5. Respondent’s disputed domain name resolves to a website offering links to its competitors in the timeshare resale and rental industry, namely <timesharesecrets.com>;
6. Respondent’s website also claims that Complainant’s business is a scam;
7. Respondent does not have rights or legitimate interests in the disputed domain name;
8. Respondent has engaged in a pattern of infringing registrations;
9. Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that it well established and a leader in the business of connecting timeshare sellers, buyers and renters through an online marketplace where timeshare owners can advertise and resell or rent their timeshare properties.
2. Complainant has used the SELL MY TIMESHARE NOW mark since 2003 to promote and market its timeshare advertising service and has established unregistered trademark rights in the SELL MY TIMESHARE NOW mark ;
3. Respondent registered the <sellmytimesharenowscam.com> domain name on February 8, 2011. It resolves to a website offering links to its competitors of Complainant in the timeshare resale and rental industry, namely www.timesharesecrets.com.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. In that regard, the Panel notes that Complainant has not alleged rights in a registered trademark. However, previous panels have determined that a trademark registration is not required to establish rights under the UDRP and that an unregistered or common law trademark is sufficient. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, it is open to the Panel to find that Complainant can establish rights in the SELL MY TIMESHARE NOW mark under Policy ¶ 4(a) (i) without a registration for the mark, if the evidence supports that conclusion.
Complainant’s submissions on this issue are that it has established rights in the SELL MY TIMESHARE NOW mark based on its long-standing, continuous, and widespread use of the mark since 2003. Complainant states that consumers now associate the SELL MY TIMESHARE NOW mark with the services it provides under the mark: online resale and rental services through the <sellmytimesharenow.com> domain name. Complainant asserts that its business has been marketed and promoted using the mark in many well-known publications and productions, including Time and “The Today Show.” The Panel accepts this evidence and submission and finds that Complainant has established its rights in the SELL MY TIMESHARE NOW mark under Policy ¶ 4(a) (i) through continuous, ongoing, and conspicuous use in association with its business. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
The second question is whether the disputed domain name is identical or confusingly similar to the SELL MY TIMESHARE NOW mark. Complainant claims that the disputed domain name is confusingly similar to the mark. Complainant states that the disputed domain name includes the entire mark, merely adding the generic top-level domain (“gTLD”) “.com” and the generic word “scam.” The Panel also notes that the disputed domain name removes the spaces between the terms of the mark as it must do to create the domain name. The Panel concludes that these changes have failed to differentiate the disputed domain name from Complainant’s SELL MY TIMESHARE NOW mark in such a fashion as to remove the domain name from the realm of confusing similarity 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 Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)). In particular, the disputed domain name is confusingly similar to the trademark despite the fact that the word “scam“ has been added. This is so because the word “scam“ is a generic word, the substance of the trademark is incorporated into the domain name without any alteration and, even with the addition, the thrust and substance of the domain name remains the same. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the SELL MY TIMESHARE NOW mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that 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 does have 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SELL MY TIMESHARE NOW mark and to use it in his domain name, adding the generic word “scam”, thus retaining the confusing similarity that arises between the domain name and the trademark.
(b)Respondent has then decided to use the domain name to lead to a website which specifically targets Complainant, disparages it and promotes a link to a business that in effect offers competition to Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel notes that Respondent has failed to provide any evidence to contradict Complainant’s argument. Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “david wolf.” Based upon the evidence on record, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c) (ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] 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).
(e) Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that the disputed domain name resolves to a website offering and recommending links to third parties and the Panel has observed that this is so. Complainant states that a majority of the links resolve to a single company, one of its primary competitors in the timeshare business operating at the website www.timesharesecrets.com. Previous panels have held that using a disputed domain name to divert Internet users to a direct competitor’s website via links does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c) (i) and Policy ¶ 4(c) (iii), respectively.
(f) Complainant contends that Respondent’s inclusion of disparaging remarks about Complainant on the website also indicates a lack of rights and legitimate interests on the part of Respondent and the Panel agrees with this submission. Previous panels have held that offering a website containing criticism of a complainant at a domain name that is confusingly similar to the complainant’s mark does not meet the requirements inherent in this provision. See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”); see also Weakley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arab. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Therefore, the Panel finds that Respondent’s inclusion of disparaging allegations directed at Complainant on its website further supports the conclusion that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in a pattern of bad faith registration and use. Complainant submits one previous UDRP decision to support its argument that Respondent has developed a pattern of such conduct. See M. Shaken Comic’s, Inc. ATTN: WINESPECTATOR.COM v. David Wolf, FA 1152971 (Nat. Arab. Forum April 3, 2008). The Panel finds that Respondent’s past infringing conduct supports a finding of bad faith under Policy ¶ 4(b) (ii). See Arai Helmet Americas, Inc. v. Gold mark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Secondly, Complainant contends that Respondent’s disputed domain name disrupts its business within the meaning of Policy ¶ 4(b) (iii). Complainant submits that the disputed domain name resolves to a website offering links that primarily resolve to one of its competitors in the timeshare industry, www.timesharesecrets.com. Complainant claims that when Internet users are diverted to this competitor it loses potential customers. The Panel agrees and finds that Respondent’s disputed domain name disrupts Complainant’s business, demonstrating bad faith registration and use under Policy ¶ 4(b) (iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Thirdly, Complainant relies on Policy ¶ 4(b) (iv) and alleges that Respondent registered and is using the disputed domain name for its own commercial gain. As has already been noted, the disputed domain name resolves to a website primarily offering links to a competitor in the timeshare industry. Complainant claims that commercial gain can be inferred from the click-through fees that Respondent most likely collects from the linked websites each time an Internet user is diverted thereto or by the fact that Respondent also owns the website to which many of the links resolve, www.timesharesecrets.com. The Panel determines that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b) (iv). See AltaVista Co. v. Kyoto, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Red Hat, Inc. v. Hacker, FA 726010 (Nat. Arab. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Fourthly, Complainant asserts that Respondent includes disparaging allegations about Complainant on its website. Previous panels have held that when a respondent uses a website resolving from a confusingly similar disputed domain name to be critical of a complainant, that fact can be construed so as to support a finding of bad faith. See 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); see also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds in all the circumstances that Respondent’s inclusion of the disparaging allegations on its website further supports a finding of bad faith registration and use under Policy ¶ 4(a) (iii).
Fifthly, Complainant alleges that Respondent had actual notice of its rights in the SELL MY TIMESHARE NOW mark when Respondent registered the disputed domain name. Complainant claims that the offering of competing content, Respondent’s diversion of Internet users to a competitor and Respondent’s direct references to Complainant on its website all point to actual knowledge on the part of Respondent and the Panel agrees. The Panel finds that Respondent had actual knowledge of Complainant and its rights in the SELL MY TIMESHARE NOW mark and therefore concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Manicures Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sellmytimesharenowscam.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 25, 2012
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