UniRush, LLC v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1206001448153
Complainant is UniRush, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <myrushcard.com>, <rushcardpro.com>, and <rushcards.com>, registered with Internet.bs.Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2012; the National Arbitration Forum received payment on June 11, 2012.
On June 14, 2012, Internet.bs.Corp confirmed by e-mail to the National Arbitration Forum that the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names are registered with Internet.bs.Corp and that Respondent is the current registrant of the names. Internet.bs.Corp has verified that Respondent is bound by the Internet.bs.Corp 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 June 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@myrushcard.com, postmaster@rushcardpro.com, and postmaster@rushcards.com. Also on June 20, 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 July 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has rights in its RUSHCARD mark as a result of owning trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,826,230 filed July 3, 2002; registered March 23, 2004). Complainant argues that the disputed domain names are confusingly similar to the RUSHCARD mark. Complainant claims that Respondent registered the disputed domain names as follows: the <myrushcard.com> domain name on April 30, 2010; the <rushcardpro.com> domain name on February 4, 2011; and the <rushcards.com> domain name on December 24, 2002. Complainant asserts that Respondent lacks rights and legitimate interests in the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names because Respondent is not commonly known by the disputed domain names and the domain names resolve to websites displaying competing links to third-party websites as well as to Complainant’s own website. Complainant argues that Respondent registered and is using the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names in bad faith for the following reasons: Respondent has made a pattern of registering domain names in bad faith, Respondent attempted to gain a wrongful competitive advantage so that it could commercially gain from the disputed domain names, and Respondent has engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its RUSHCARD mark.
2. Respondent’s disputed domain names are confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the disputed domain names.
4. Respondent registered and used the domain names in bad faith.
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.”).
Complainant contends that it is the owner of trademark registrations for the RUSHCARD mark (e.g., Reg. No. 2,826,230 filed July 3, 2002; registered March 23, 2004) with the United States Patent and Trademark Office (“USPTO”) and thus has rights in the RUSHCARD mark. Panels have found that, where a mark is registered through the USPTO, the registrant has rights in said mark that date back to the time the mark was filed. 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 Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has rights in the RUSHCARD mark pursuant to Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names are confusingly similar to the RUSHCARD mark. The Panel finds that Respondent’s addition of the generic term “my” or “pro” or the single letter “s” to some of the disputed domain names fails to make them distinct from Complainant’s mark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names is irrelevant to a Policy ¶ 4(a)(i) analysis. 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). Therefore, the Panel finds that the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names are confusingly similar to the RUSHCARD mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent does not have rights or legitimate interests in the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names in part because Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS records for the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names list “Fundacion Private Whois / Domain Administrator” as the domain name registrant, which the Panel finds does not suggest a connection to Respondent beyond the simple registration of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant asserts that Respondent’s use of the disputed domain names further supports its claim that Respondent lacks rights and legitimate interests. Complainant contends that the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names resolve to websites that display links to Complainant and its competitors. The panel in Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), found that the use of a disputed domain name to display links to the complainant and its competitors is not protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant submitted evidence that Respondent has been in multiple previous UDRP proceedings that resulted in the disputed domain names in those cases being transferred to the respective complainants. See Thomson Reuters v. Fundacion Private WHOIS / Domain Adm’r, FA 1439297 (Nat. Arb. Forum May 24, 2012); see also Chevron Intellectual Prop. LLC v. Fundacion Private Whois / Domain Adm’r, FA 1438289 (Nat. Arb. Forum May 16, 2012). The Panel finds that multiple adverse UDRP proceedings constitute evidence of Respondent’s serial cybersquatting and are evidence of Respondent’s bad faith registration and use in the current case under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant next argues that Respondent registered and is using the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names in order to create confusion as to the source of the disputed domain name and profit from the resulting mistakes. Complainant argues that Respondent uses the RUSHCARD mark to create this confusion and increases it with the display of links to Complainant’s and Complainant’s competitors. The Panel finds that Respondent means for the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source of the disputed domain names. THE Panel finds this to be the case, and finds that the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names were registered and are being used in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. 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).
Complainant contends that Respondent’s bad faith is further demonstrated by Respondent’s typosquatting of the RUSHCARD mark. Complainant contends that Respondent made no substantive changes to the <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names besides the addition of the generic term “my” or “pro” or the letter “s.” The Panel notes that typosquatting is generally only found where additions to a mark in a domain name are limited to a single letter rather than a full term. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent’s bad faith is clear with regard to the <rushcards.com> domain name due to having typosquatted the RUSHCARD mark pursuant to 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 <myrushcard.com>, <rushcardpro.com>, and <rushcards.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 25, 2012
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