national arbitration forum

 

DECISION

 

Woot, Inc. v. PPA Media Services / Ryan G Foo

Claim Number: FA1207001454856

 

PARTIES

Complainant is Woot, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wooot.com>, registered with Internet.bs Corp.

 

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2012; the National Arbitration Forum received payment on July 24, 2012.

 

On July 31, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <wooot.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  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 August 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@wooot.com.  Also on August 2, 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 27, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges:

 

Complainant began operation in 2004 and offers online retail services under the WOOT mark.  Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WOOT (Reg. No. 3,012,788 registered November 8, 2005) and WOOT! Marks (Reg. No. 3,397,587 registered March 18, 2008).  See Complainant’s Exhibit D.  Respondent’s <wooot.com> domain name is identical to Complainant’s WOOT mark, except for the additions of the letter “o” and the generic top-level domain (“gTLD”) “.com.” 

 

Respondent is not commonly known by the <wooot.com> domain name.  Respondent is not affiliated with Complainant and is not licensed by Complainant to use the WOOT mark.  The WHOIS information identifies the registrant of the disputed domain name as “PPA Media Services / Ryan G Foo.”  See Complainant’s Exhibit A.  The <wooot.com> domain name resolves to a website entitled “Weekly Prize Survey” that states “Congratulations! You’ve been selected from the Dallas region to take part in our annual visitor survey.  This will only take 30 seconds of your time and will enhance user experience.  Upon completion you will have the opportunity to get a Macbook Air®, an iPhone 4S®, or an iPad 2®.”  Complainant’s Exhibit F.  Respondent receives referral fees for each Internet user that participates in the survey, according to the “About Us” hyperlink on the homepage.  See id.  Internet users that provide their contact information then receive telemarketing calls and SMS/text messages.  Respondent also offers the <wooot.com> domain name for sale.  See Complainant’s Exhibits A & G.  Respondent further attempts to take advantage of common mistyping and misspelling errors, which is evidence of typosquatting.

 

Respondent is listing the <wooot.com> domain name as for sale, which indicates bad faith registration and use.  Respondent has been a respondent in previous UDRP cases in which the panels ordered Respondent to transfer the disputed domain names to Complainant.  See Homer TLC, Inc. v. PPA Media Servs., FA 1416637 (Nat. Arb. Forum Jan. 13, 2012); see also Am. Sports Lic., Inc. v. PPA Media Servs., FA 1426016 (Nat. Arb. Forum Mar. 2, 2012); see also Univision Comm. Inc. v. PPA Media Servs., FA 1429880 (Nat. Arb. Forum Apr. 11, 2012).  Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s WOOT mark, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  Respondent registered and uses the <wooot.com> domain name as a part of a phishing scheme.  Respondent registered the <wooot.com> domain name one day after Complainant’s acquisition by Amazon.com was announced, which evidences opportunistic bad faith.  Finally, Respondent’s <wooot.com> domain name is an example of typosquatting, which is also proof of bad faith registration and use.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

1.    Complainant has rights in its WOOT mark.

2.    Respondent’s <wooot.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges that Complainant began operation in 2004 and offers online retail services under the WOOT mark.  Complainant claims that it owns trademark registrations with the USPTO for its WOOT (Reg. No. 3,012,788 registered November 8, 2005) and WOOT! Marks (Reg. No. 3,397,587 registered March 18, 2008).  See Complainant’s Exhibit D.  The Panel notes that Respondent resides or operates in Chile.  Nevertheless, the Panel finds that Complainant owns rights in the WOOT and WOOT! marks for the purpose of Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).

 

Complainant contends that Respondent’s <wooot.com> domain name is identical to Complainant’s WOOT mark.  Complainant notes that the <wooot.com> domain name differs from Complainant’s WOOT mark by the additions of the letter “o” and the gTLD “.com.”  The Panel determines that these additions do not remove the <wooot.com> domain name from the realm of confusing similarity in regards to the WOOT mark under Policy ¶ 4(a)(i).  See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

 

Rights or Legitimate Interests

 

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 avers that Respondent is not commonly known by the <wooot.com> domain name.  Complainant contends that Respondent is not affiliated with Complainant and is not licensed by Complainant to use the WOOT mark.  Complainant further alleges that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.  The WHOIS information identifies the registrant of the disputed domain name as “PPA Media Services / Ryan G Foo,” which Complainant argues is further evidence that Respondent is not commonly known by the disputed domain name.  See Complainant’s Exhibit A.  Due to Respondent’s failure to respond, the Panel  notes that there is no evidence conflicting with Complainant’s allegations in the record.  Consequently, the Panel concludes that Respondent is not commonly known by the <wooot.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant argues that the <wooot.com> domain name resolves to a website entitled “Weekly Prize Survey” that states: “Congratulations! You’ve been selected from the Dallas region to take part in our annual visitor survey.  This will only take 30 seconds of your time and will enhance user experience.  Upon completion you will have the opportunity to get a Macbook Air®, an iPhone 4S®, or an iPad 2®.”  Complainant’s Exhibit F.  Complainant alleges that Respondent receives referral fees for each Internet user that participates in the survey and cites the “About Us” webpage found linked to the resolving website.  See id.  Complainant asserts that Internet users that provide their contact information then receive telemarketing calls and SMS/text messages, according to the fine print.  See id.  Complainant argues that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <wooot.com> domain name under Policy ¶ 4(c)(iii).  The Panel  agrees.  See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to 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 further claims that Respondent also offers the <wooot.com> domain name for sale.  See Complainant’s Exhibits A & G.  The Panel notes that, according to Complainant’s Exhibits, Respondent lists the <wooot.com> domain name for sale on Sedo.  The Panel determines that Respondent’s general offer to sell the <wooot.com> domain name is evidence that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii).  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

According to Complainant, Respondent’s registration of the <wooot.com> domain name, which Complainant alleges contains a common misspelling of Complainant’s mark, constitutes typosquatting.  The Panel agrees.  The Panel  conclude that Respondent’s typosquatting is also evidence that Respondent lacks rights and legitimate interests in the <wooot.com> domain name pursuant to Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

 

Registration and Use in Bad Faith

 

As noted under Policy ¶ 4(a)(ii), Complainant asserts that Respondent is listing the <wooot.com> domain name for sale with Sedo.  Complainant argues that this offer to sell indicates bad faith registration and use.  The Panel determines that Respondent is offering the disputed domain name for sale and infers that Respondent intends to receive more than Respondent’s out-of-pocket costs. The Panel finds that Respondent registered and uses the <wooot.com> domain name in bad faith for the purpose of Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Complainant alleges that Respondent has been a respondent in previous UDRP cases in which the panels ordered Respondent to transfer the disputed domain names to Complainant.  See Homer TLC, Inc. v. PPA Media Servs., FA 1416637 (Nat. Arb. Forum Jan. 13, 2012); see also Am. Sports Lic., Inc. v. PPA Media Servs., FA 1426016 (Nat. Arb. Forum Mar. 2, 2012); see also Univision Comm. Inc. v. PPA Media Servs., FA 1429880 (Nat. Arb. Forum Apr. 11, 2012).  The Panel notes that Complainant cites even more cases in the Complaint.  The Panel treats these prior UDRP cases involving Respondent as evidence that Respondent registered and uses the <wooot.com> domain name as a part of a pattern of bad faith registration and use 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 contends that Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s WOOT mark.  As noted previously, Complainant claims that Respondent receives referral fees each time Internet users participate in the online survey.  Complainant claims that Respondent purposefully uses Complainant’s WOOT mark in the disputed domain name, which the Panel infers increases Internet users’ confusion as to Complainant’s affiliation with the <wooot.com> domain name.  Therefore, the Panel finds that Respondent registered and uses the <wooot.com> domain name in bad faith according to Policy ¶ 4(b)(iv).  See Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (finding that a domain name which resolves to a website which solicits Internet users for the completion of surveys is evidence of bad faith due to an attraction for commercial gain).

 

Complainant further argues that Respondent registered and uses the <wooot.com> domain name as a part of a phishing scheme.  Complainant claims that Respondent collects the personal information that Internet users provide for the survey and uses this information for telemarketing and SMS/text messages.  The Panel finds that Respondent is engaged in a phishing scheme. The Panel  concludes that Respondent registered and uses the <wooot.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).

 

According to Complainant, Respondent registered the <wooot.com> domain name one day after Complainant’s acquisition by Amazon.com was announced.  Complainant argues that this demonstrates opportunistic bad faith.  The Panel finds that Respondent opportunistically registered the disputed domain name based on this announcement. The Panel finds that Respondent registered the <wooot.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).

 

Finally, Complainant alleges that Respondent’s <wooot.com> domain name is an example of typosquatting.  The Panel previously found that Respondent’s <wooot.com> domain name evidences typosquatting.  The Panel holds that Respondent registered and uses the <wooot.com> domain name in bad faith according to Policy ¶ 4(a)(iii).  See Nextel Commcns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondents registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).

 

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 <wooot.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 10, 2012

 

 

 

 

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