national arbitration forum

 

DECISION

 

TaskRabbit, Inc. v. Lito2380

Claim Number: FA1206001450989

 

PARTIES

Complainant is TaskRabbit, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA.  Respondent is Lito2380 (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clonetaskrabbit.com>, registered with GoDaddy.com, LLC.

 

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.

 

James Bridgeman as Panelist.

 

PROCEDURAL HISTORY

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, LLC confirmed by e-mail to the National Arbitration Forum that the <clonetaskrabbit.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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@clonetaskrabbit.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.

 

A timely Response was received and determined to be complete on July 9, 2012.

 

On July 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

 

Complainant claims ownership of and the exclusive right to use the TASKRABBIT service mark which has been used by Complainant since at least as early as April 8, 2010 in connection with an Internet based service which assists people who are willing to carry out tasks for third parties.

 

Complainant further relies in this proceeding on its rights in the U.S. trademark registrations listed below for the TASKRABBIT mark, on its own and in combination with other elements.

 

Complainant submits that demand for its the services has grown exponentially in the past two years and consequently Complainant has received extensive media coverage including articles in the Wall Street Journal, TechCrunch, The New York Times, and Fast Company.

 

Complainant alleges that the disputed domain name <clonetaskrabbit.com> is identical or confusingly similar to Complainant’s TASKRABBIT service mark and submits that the addition of the “clone” and “.com” elements are not sufficient to distinguish the disputed domain name <clonetaskrabbit.com> from Complainant’s TASKRABBIT mark. Citing Victoria’s Secret Stores Brand Management, Inc. v. Wireless Marketing Services, LLC, FA 1191372 (Nat. Arb. Forum, July 2, 2008) (Addition of “sales” and “.com” to VICTORIA’S SECRET mark not sufficient to differentiate the domain name <victoriassecretsales.com>).

 

Complainant submits that Internet users are likely to conclude that the disputed domain name <clonetaskrabbit.com> is connected with Complainant because the disputed domain name is identical and confusingly similar to Complainant’s TASKRABBIT mark and because the disputed domain name resolves to a website that offers a product that is in direct competition with Complainant’s products. Complainant submits that Respondent is almost certainly causing confusion among members of the public on the Internet.

 

Complainant submits that the product offered by Respondent at the website to which the disputed domain name resolves is a counterfeit copy of Complainant’s product which Respondent describes as a “highly flexible and robust tasking engine”. The product description is identical to that used by Complainant to describe its services on its own website. In an annex to the Complaint, Complainant has furnished printouts of both its own website and the website to which the disputed domain name resolves.

 

Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name.

 

Complainant states that upon information and belief, Respondent does not have any legitimate right to use the TASKRABBIT mark and Respondent has no trademark rights in connection with any mark that is identical, similar or in any way related to Complainant’s TASKRABBIT mark.

 

According to the WhoIs registration details for the disputed domain name, Respondent’s name is Lito2380. Complainant submits that upon information and belief, TASKRABBIT is therefore not Respondent's personal name or business name and Respondent is not known to the public by the name TASKRABBIT or TASKRABBIT CLONE. Complainant cites the decisions of the panels in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark) and Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Complainant states that Respondent has no relationship whatsoever with Complainant: Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use Complainant’s marks or any mark comprising or containing the TASKRABBIT mark. Complainant further asserts that Respondent did not receive permission from Complainant to register the disputed domain name or any other domain name containing the TASKRABBIT mark.

 

Complainant submits that Respondent is not, and has not been, using the disputed domain name in connection with any bona fide offering of goods and services. Complainant asserts that Respondent is offering competing counterfeit products, and submits that such use is not a bona fide offering of goods and services. Complainant cites Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did 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)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Complainant submits that Respondent has not made, and is not now making, any legitimate noncommercial or fair use of the disputed domain name. Respondent is directly competing with Complainant while using Complainant’s TASKRABBIT mark, therefore there can be no finding of a bona fide offering of goods or services by Respondent in connection with the disputed domain name. Citing, Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Young Genius Software AB v. MWD, D2000-0591 (WIPO, Aug. 7, 2000) (respondent cannot be deemed to make bona fide use of mark where a trademark search would have revealed complainant's prior rights).

 

Respondent cannot establish legitimate rights in the disputed domain name. Respondent acts as a competitor by capturing Internet users who would otherwise be potential consumers of Complainant. The goods and services offered by Complainant and Respondent are so overwhelmingly similar that there is no possible non-infringing use of the the disputed domain name by Respondent. Citing Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that 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”). Complainant submits that it is deprived of potential opportunities to provide its goods and services by reason of Respondent’s wrongful conduct.

 

Complainant alleges that the disputed domain name was registered and is being used in bad faith. Complainant submits that the fact that Respondent is using the disputed domain name in connection with the offering and sale of competitive products, and the clear connection between Respondent’s use of the disputed domain name and Complainant’s trademark, goods, and services, all lead to the inescapable conclusion that Respondent had actual knowledge of Complainant and its TASKRABBIT trademark when it registered the disputed domain name. See Telebrands Corp. v. Khurram Shahzad c/o paranox, FA 467078 (Nat. Arb. Forum, June 8, 2005) (inferring actual knowledge of complainant’s mark from respondent’s use of domain name in connection with offering and sale of competitive products).

 

The disputed domain name was created on January 28, 2012, which was well over a year after Complainant began using, and had filed trademark applications for, the TASKRABBIT trademark. Complainant argues that at a minimum, Respondent had constructive knowledge of Complainant’s rights when the disputed domain name was registered. Am. Int’l Grp., Inc., FA 1013505 (Nat. Arb. Forum, August 2, 2007) (respondent had constructive knowledge of complainant’s marks prior to registration of domain name by virtue of complainant’s prior registration of mark with the USPTO); see also Young Genius Software AB v. MWD, D2000-0591 (WIPO, Aug. 7, 2000) (respondent cannot be deemed to make bona fide use of mark where a trademark search would have revealed complainant's prior rights).

 

Complainant submits that Respondent's registration and use of the disputed domain name is intentionally and inherently deceptive and is meant to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. The use of a domain name in such a way as to create a likelihood of confusion with Complainant’s mark is itself evidence of bad faith. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

 

Complainant submits that Respondent’s unauthorized use of the disputed domain name in connection with the offering and sale of competitive goods and services that are not authorized by Complainant is clear evidence of bad faith. Citing Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Victoria’s Secret Stores Brand Mgmnt., Inc. v. Kemp, FA 1300734 (Nat. Arb. Forum, Feb. 11, 2010) (“[U]se of the confusingly similar domain name to attract Internet users seeking Complainant’s products or services and divert them to a website that sells” competitive products “is evidence of bad faith registration and use under Policy ¶ 4(b)(iv)”); see also 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).

 

B. Respondent

 

The Response is very brief and can be quoted in full:

           

            “In January a friend of mind asked if he could use my account to register a domain name for an idea he had. He told me that he would be creating a clone software. I did not think twice – as I have done other work with him and said it was ok. He registered the domain and proceeded to setup the domain how he needed. At no point did I consider that the domain might infringe on a trademarked name. I had zero involvement in the site production, and my complete involvement in the matter was giving my password to my friend.

 

            I am willing to release domain to complainant with a release of liability letter and compensation of cost of domain and administrative fees from Godaddy. I have no interest in the domain and can testify that I have not made any personal gains from the purchase of the domain. The website that was previously up has been brought down.”

 

 

FINDINGS

 

Over a relatively short time, Complainant has developed a significant goodwill and reputation in the use of the TASKRABBIT trademark and service mark in connection with its Internet based introduction service.

 

Complainant is the owner of the following trademark registrations:

 

TASKRABBIT, U.S. Reg. No. 3,907,610, filed on June 3, 2010, and registered on January 18, 2011 in international class 42 for “Providing temporary use of a web-based software application for identifying and defining the scope and components of projects; providing temporary use of a web-based software application for providing an online marketplace for buyers and sellers of goods and/or services on a global computer network; Providing temporary use of a webbased software application for providing a two-way system for users of an online marketplace to evaluate and provide feedback regarding parties they have interacted with via the online marketplace”; claiming first use in commerce on April 8, 2010.

 

TASKRABBIT LIFE IS BUSY. WE CAN HELP and Design, U.S. Reg. No.  3,907,614, filed on June 3, 2010 and registered on January 18, 2011 in international class 42 for “Providing temporary use of a web-based software application for identifying and defining the scope and components of projects; providing temporary use of a web-based software application for providing an online marketplace for buyers and sellers of goods and/or services on a global computer network; Providing temporary use of a web-based software application for providing a two-way system for users of an online marketplace to evaluate and provide feedback regarding parties they have interacted with via the online marketplace.”; claiming first use in commerce on April 8, 2010.

 

TASKRABBIT, U.S. Reg. No. 4,003,673 filed on June 3, 2010, and registered on July 26, 2011 in international class 35 for “Business services, namely, providing an online marketplace for buyers and sellers of goods and/or services on a global computer network; business services, namely, providing a website where users of an online marketplace can post ratings and provide feedback on services they received from others and the service providers can post ratings and provide feedback on their consumers; Advertising services, namely, promoting the services of others”; claiming first use in commerce on April 8, 2010.

 

TASKRABBIT LIFE IS BUSY. WE CAN HELP and Design, U.S. Reg. No. 4,003,674’ filed on June 3, 2010 and registered on July 26, 2011 in international class 35 for “Business services, namely, providing an online marketplace for buyers and sellers of goods and/or services on a global computer network; business services, namely, providing a website where users of an online marketplace can post ratings and provide feedback on services they received from others and the service providers can post ratings and provide feedback on their consumers; Advertising services, namely, promoting the services of others”; claiming first use in commerce on April 8, 2010.

 

The disputed domain name was created on January 28, 2012.

 

The Response filed by the Respondent provides little or no information about Respondent.

 

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 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.

 

Preliminary Issue: Consent to Transfer

 

In his Response, Respondent offered to transfer the disputed domain name to Complainant. Since the initiation of the proceeding, the registrar, GoDaddy.com, LLC, has placed a hold on Respondent’s account and therefore Respondent would not be able to transfer the disputed domain name while this proceeding is still pending. In similar circumstances, panels have decided to forego the traditional UDRP analysis and order an immediate transfer of the domain name in dispute. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

Each case must be considered on its own merits. In the present case Respondent’s offer to transfer the disputed domain name <clonetaskrabbit.com> is subject to conditions. Furthermore, Respondent is purporting to distance himself from the registration and use of the disputed domain name but at the same time his offer indicates that he has power to dispose of it. Additionally, the plan described by Respondent to develop software to clone Respondent’s software indicates a high level of knowledge and technical sophistication on the part of Respondent and his associates. In the circumstances this Panel has decided to review the Complaint on the merits.

 

Identical and/or Confusingly Similar

 

Complainant is the owner of and has acquired rights in the TASKRABBIT service mark though its recent but extensive established use of the mark in connection with the provision of Internet based services and through its above-listed U.S. trademark registrations.

 

This Panel finds that the disputed domain name is confusingly similar to Complainants TASKRABBIT service mark. The disputed domain name is composed of Complainant’s mark in combination with the non-distinctive element “clone”. For the purposes of comparison the “.com” gTLD extension may be ignored. 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).. The word “clone” lacks distinctiveness in the context and “taskrabbit” is the dominant element of the disputed domain name.

 

While it has not been argued or addressed by either Party, this Panel has considered whether the combination of the word “clone” which implies a copy with the TASKRABBIT mark might serve to distinguish the domain name and mark. This Panel finds that Internet users are nonetheless likely to be confused by the similarity of the disputed domain name and the mark relied upon by Complainant at both an initial interest stage and subsequently due to the content of Respondent’s website offering services that purport to compete with Complainant.

 

Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a).

 

Rights or Legitimate Interests

 

Complainant is obliged to make out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name and having done so, the burden of proof shifts to Respondent. 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 has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Complainant is the owner of the TASKRABBIT trademark and has never permitted or licensed Respondent to use the mark. Respondent is not known as TASKRABBIT or CLONETASKRABBIT. Furthermore Complainant has furnished evidence that Respondent has been using the disputed domain name to offer counterfeit services.

 

The onus of proof therefore shifts to Respondent to prove such rights or interest and Respondent has failed so to do. On the evidence, for reasons given below, this Panel finds that Respondent registered and has used the disputed domain name to take advantage of Complainant’s reputation and goodwill to divert Internet users to Respondent’s website in order to offer competing services. Respondent cannot acquire rights in TASKRABBIT or CLONETASKRABBIT as trademarks by means of such use. Neither can such use be construed as legitimate in any way and cannot fall within the protective bounds of Policy ¶¶ 4(c)(i) or 4(c)(iii). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a confusingly similar domain name to sell counterfeit products 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).).

 

In the circumstances Respondent has failed to discharge the required burden of proof and Complainant succeeds in the second element of the test in  Policy ¶ 4(a).

 

Registration and Use in Bad Faith

 

Complainant’s use of the TASKRABBIT trademark pre-dated the registration of the disputed domain name. Complainant claims first use of the TASKRABBIT service mark in commerce on April 8, 2010; its predecessor in title filed the applications upon which it relies on June 3, 2010; and the trademarks were registered on January 18, 2011 and  July 26, 2011 respectively.

 

The disputed domain name was not registered until January 28, 2012.

 

It is improbable that Respondent created and registered a domain name comprised of the words “clone” and the distinctive “taskrabbit” without intending a reference to Complainant’s trademark and website.

 

It may be inferred from the brief Response filed that the disputed domain name itself is a reference to Complainant’s trademark in that it purports to infer that software on the website to which it resolves is a self-described clone of the Complainant’s software. This finding is supported by the inference in the Response where Respondent states that his friend proposed the creation of “a clone software”.

 

Respondent submits that he innocently agreed to provide his account details to a friend who had proposed creating a clone software and that he was not aware that use of the disputed domain name would infringe Complainant’s rights. This defense is not very credible because the plan itself demonstrates a high level of technical knowledge and sophistication on the part of Respondent and his associates.

 

In any event, whether Respondent subjectively viewed his activities as infringing or not cannot be the test in deciding the issue of bad faith under the Policy. Objectively, the disputed domain name was admittedly registered to be used as the address of a website providing a “clone” of Complainant’s software. The purpose was to take predatory advantage of Complainant’s goodwill. Following registration Respondent caused, permitted or allowed the disputed domain name to resolve to a website that directly competed with Complainant’s services.

 

Respondent has not identified his friend or given any explanation as to why his friend might require Respondent’s account details in order to effect a registration. Taking all circumstances into account this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith.

 

On the evidence, the disputed domain name was registered to provide services that directly compete with and consequently disrupt Complainant’s business. The subsequent use of the disputed domain name intentionally attempted to attract Internet users to Respondent’s web site, for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the service offered on his website.

 

This Panel cannot accept that Respondent may distance himself from the registration and subsequent use of the disputed domain name. He admittedly at least colluded in the plan to use the disputed domain name <clonetaskrabbit.com> to establish a competing website. Subsequently, he has remained the registrant and by offering to transfer the disputed domain name to Complainant on terms, he asserts that he retains control over the registration.

 

In the circumstances this Panel finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith.

 

Complainant has therefore satisfied the third and final element of the test in Policy ¶ 4(a) and succeeds in its application.

 

 

DECISION

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

 

Accordingly, it is Ordered that the <clonetaskrabbit.com> domain name be TRANSFERRED from Respondent to Complainant.

 

-------------------------------------

 

James Bridgeman, Panelist

Dated:  August 1, 2012

 

 

 

 

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