UniRush, LLC v. Private Registrations / Aktien Gesellschaft / Domain Admin
Claim Number: FA1207001451796
Complainant is UniRush, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations / Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushcardservices.com>, <rushccard.com>, <therushcard.com>, and <ushcard.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2012; the National Arbitration Forum received payment on July 3, 2012.
On July 9, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushcardservices.com>, <rushccard.com>, <therushcard.com>, and <ushcard.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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 July 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@rashcard.com, postmaster@ruhcard.com, postmaster@rushcaard.com, postmaster@rushcaed.com, postmaster@rushcardservices.com, postmaster@rushccard.com, postmaster@therushcard.com, and postmaster@ushcard.com. Also on July 17, 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 August 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushcardservices.com>, <rushccard.com>, <therushcard.com>, and <ushcard.com> domain names are confusingly similar to Complainant’s RUSHCARD mark.
2. Respondent does not have any rights or legitimate interests in the<rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushcardservices.com>, <rushccard.com>, <therushcard.com>, and <ushcard.com> domain names.
3. Respondent registered and used the <rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushcardservices.com>, <rushccard.com>, <therushcard.com>, and <ushcard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the following trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RUSHCARD mark:
Reg. No. 2,826,230 registered March 23, 2004;
Reg. No. 3,959,733 registered May 10, 2011; and
Reg. No. 3,984,104 registered June 28, 2011.
Complainant’s RUSHCARD is a reloadable prepaid Visa debit card.
Respondent registered the disputed domain names no earlier than December 4, 2005, and uses them to resolve to websites with pay-per-click links that promote competing products.
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.”).
Despite Respondent’s location in Saint Vincent and the Grenadines, the Panel finds that Complainant’s USPTO trademark registrations suffice to show Complainant has established rights in the RUSHCARD mark pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <getrushcards.com>, <rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushcardservices.com>, <rushccard.com>, <therushcard.com>, and <ushcard.com> domain names are confusingly similar to Complainant’s RUSHCARD mark, as they all differ from the mark either in the deletion, addition, or substitution of a single character or term, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that these minor changes are insignificant and fail to prevent confusing similarity pursuant to Policy ¶ 4(a)(i). See 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); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent is not commonly known by the disputed domain names as the WHOIS information identifies the registrant of the domain names as “Private Registrations / Aktien Gesellschaft / Domain.” Complainant also contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that Complainant has not given Respondent permission, license or authorization to use the RUSHCARD mark in a domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name and does not have rights and legitimate interests pursuant to 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).
Complainant states that Respondent uses the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant alleges that Respondent earns pay-per-click fees from these linked websites. The Panel finds that Respondent’s use of the disputed domain names to maintain a pay-per-click website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is a recalcitrant, serial cybersquatter that has been involved in prior UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See, e.g., L’Oreal SA v. Private Registrations Aktien Gesellschaft, Domain Admin, D2012-0780 (WIPO May 25, 2012); BuySeasons, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1444579 (Nat. Arb. Forum June 18, 2012); and Gamestop, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1444484 (Nat. Arb. Forum June 29, 2012). Complainant also contends that Respondent has registered other domain names that appear to be straightforward examples of typosquatting on others’ marks, such as <wwwbedbathbeyond.com>, <jcpenneyservices.com>, and <mgm-grand.com>. The Panel finds that Respondent has shown a bad faith pattern of domain name registration under Policy ¶ 4(b)(ii) due to its prior involvement in UDRP proceedings where domain names were transferred and Respondent’s registration of multiple infringing domain names in the instant proceeding. 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); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Respondent displays pay-per-click links on the website resolving from the disputed domain names, which promote products that compete with Complainant’s products. These links divert potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business. The Panel finds that Respondent’s display of competitive links disrupts Complainant’s business and therefore indicates bad faith registration and use according to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the disputed domain names to take advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and commercial gain. The Panel finds that this also constitutes bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, 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).
Respondent’s registration of the <rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushccard.com>, and <ushcard.com> disputed domain names indicates typosquatting, which is also evidence of bad faith registration under Policy ¶ 4(a)(iii). 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).
The Panel finds that Complainant has satisfied 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 <rashcard.com>, <ruhcard.com>, <rushcaard.com>, <rushcaed.com>, <rushcardservices.com>, <rushccard.com>, <therushcard.com>, and <ushcard.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 15, 2012
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