TaskRabbit, Inc. v. Rockers Technology
Claim Number: FA1206001450988
Complainant is TaskRabbit, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is Rockers Technology (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taskrabbitclone.com>, registered with GoDaddy.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2012; the National Arbitration Forum received payment on June 27, 2012.
On June 28, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <taskrabbitclone.com> 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 June 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@taskrabbitclone.com. Also on June 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 July 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant owns rights in the TASKRABBIT mark and operates a business under such trademark. Complainant’s business involves connecting people who need help with a task with people that are willing to do the task for free.
Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TASKRABBIT mark (e.g., Reg. No. 3,907,610 registered January 18, 2011).
The disputed domain name was created on July 30, 2011.
The <taskrabbitclone.com> domain name is confusingly similar to the TASKRABBIT mark. The additions of the generic term “clone” and the generic top-level domain (“gTLD”) “.com” are not sufficient to distinguish the disputed domain name from Complainant’s mark.
Respondent is not known by the <taskrabbitclone.com> domain name. Respondent is “Rockers Technology” and TASKRABBIT is not Respondent’s personal or business name.
Respondent is not a licensee of Complainant and has never been authorized by Complainant to use Complainant’s TASKRABBIT mark.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The website resolving from the <taskrabbitclone.com> domain name offers identical and competing services.
Respondent registered and uses the <taskrabbitclone.com> domain name for the purpose of creating a likelihood of confusion as to Complainant’s association with the disputed domain name in order to commercially gain.
Respondent uses the disputed domain name to host a website that offers identical and competing services.
Respondent commercially benefits by charging for these services.
Respondent had actual and constructive knowledge of Complainant’s rights in the TASKRABBIT mark.
Complainant’s trademark registrations with the USPTO and evidence of prior use of the TASKRABBIT mark ensure Respondent had constructive knowledge of Complainant’s mark.
Respondent’s use of the disputed domain name to provide identical and competing services is evidence that Respondent had actual knowledge of Complainant’s TASKRABBIT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trade trademark rights in the TASKRABBIT mark. Complainant acquired such rights prior to Respondent’s registration of the at‑issue domain name.
Respondent is not affiliated with Complainant and had not been authorized to use the TASKRABBIT mark in any capacity.
Respondent registered the at‑issue domain name subsequent to Complainant acquiring trademark rights in TASKRABBIT.
Respondent had actual knowledge of Complainant and Complainant’s rights in the TASKRABBIT mark at the time it registered the at‑issue domain name.
The at-issue domain name references a website which offers identical and competing services.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
A trademark registration with a national trademark authority such as the USPTO sufficiently conclusively establishes Complainant’s rights in a mark for the purposes of Policy ¶4(a) (i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The fact that Respondent may reside outside of the jurisdiction of the registering body is immaterial. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The additions of the generic term “clone” and the generic top-level domain, “.com” are insufficient to distinguish the at‑issue domain name from Complainant’s mark. The Panel thus finds that the at‑issue domain name is confusingly similar to Complainant’s trademark. 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent lacks rights and legitimate interests in respect of the <taskrabbitclone.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent is not a licensee of Complainant and has never been authorized by Complainant to use Complainant’s TASKRABBIT mark. Furthermore, Respondent is “Rockers Technology.” TASKRABBIT is not Respondent’s personal or business name and WHOIS information identifies “Rockers Technology” as the registrant of the at‑issue domain name. The record contains no evidence tending to prove that that Respondent is known by the domain name. These circumstances indicate that Respondent is not commonly known by the <taskrabbitclone.com> domain name under Policy ¶ 4(c)(ii). See 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).
The <taskrabbitclone.com> domain name references a website that offers identical and competing services to that of Complainant. Some of the offerings on Respondent’s website appear to be counterfeit versions of Complainant’s commercial services. Using a confusingly similar domain name in this manner is antithetical to either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <taskrabbitclone.com> domain name. See 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).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent uses the <taskrabbitclone.com> domain name in a manner that creates a likelihood of confusion as to Complainant’s association with, or sponsorship of, the at‑issue domain name. As mentioned above, Respondent uses the at‑issue domain name to host a website that offers identical and competing services to that of Complainant’s. The website is undoubtedly commercial. These facts suggest bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Furthermore, the rather unique nature of Complainant’s TASKRABBIT trademark coupled with Respondent’s use of the at‑issue domain name to trade on such mark demonstrates that Respondent had actual knowledge of Complainant and Complainant’s TASKRABBIT trademark at the time it registered the at-issue domain name. Respondent‘s registration of the at-issue domain name with knowledge of the Complainant’s rights in TASKRABBIT indicates bad faith registration and use pursuant to Policy ¶4(a) (iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)"; see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith…)
Finally, Respondent acts as Complainant’s competitor by capturing Internet users who are potential consumers of Complainant’s goods and/or services. Respondent’s commercial offerings are so similar to Complainant’s that there is little or no possible non-infringing use of the at‑issue domain name by Respondent. The foregoing further indicates Respondent’s bad faith registration and use of the domain name under Policy ¶4(a) (iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <taskrabbitclone.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 30, 2012
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