national arbitration forum

 

DECISION

 

TRS Quality, Inc. v. Paydues Inc

Claim Number: FA1209001462177

 

PARTIES

Complainant is TRS Quality, Inc. (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA.  Respondent is Paydues Inc (“Respondent”), New Mexico, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 11, 2012; the National Arbitration Forum received payment on September 11, 2012.

 

On September 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <radioshackfranchise.net> 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 its regis-tration agreement with GoDaddy.com, LLC 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 September 13, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 3, 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, administra-tive, and billing contacts, and to postmaster@radioshackfranchise.net.  Also on September 13, 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 Respond-ent’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 October 10, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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, a subsidiary of RadioShack Corp., owns the RADIOSHACK trademark and service mark.

 

Complainant licenses its parent company to use the RADIOSHACK brand in connection with the marketing of its electronic goods.

 

Complainant’s parent company offers franchise opportunities, and approximately 20% of its RadioShack stores in the United States are franchise operations.

 

Complainant has actively promoted its RADIOSHACK trademark and service mark through advertising to reach millions of consumers globally, and its mark has earned substantial fame.

 

Complainant protects its RADIOSHACK trademark and service mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,164,296, registered June 9, 1998).

 

Complainant sells electronic goods, including radios, stereo tuners, amplifiers, audio speakers and enclosures, microphones and switches, intercoms, pagers, telephones, calculators, keyboards, computers and video equipment.

 

Complainant owns the <franchiseradioshack.com> domain name, by which it offers its franchise opportunities and franchisee assistance.

 

Respondent registered the <radioshackfranchise.net> domain name on or about July 11, 2007.

 

Respondent’s <radioshackfranchise.net> domain name resolves to a website that offers unauthorized information on becoming a RADIOSHACK franchisee, and attempts to solicit personal information from website visitors in exchange for software purporting to relate to becoming a franchisee of Complainant. 

 

A consumer must purchase a “key” in order to use the software beyond a thirty-day trial period, as a result of which Respondent receives income from the oper-ation of the website resolving from the contested domain name.

 

The <radioshackfranchise.net> domain name is confusingly similar to Complain-ant’s RADIOSHACK trademark.

 

Respondent exploits consumer confusion as to the possibility of Complainant’s affiliation with the disputed domain name and its resolving website.

 

Respondent has not been commonly known by the <radioshackfranchise.net> domain name.  

 

Complainant has not consented to Respondent’s use of the RADIOSHACK mark in a domain name.

Respondent uses the disputed domain name to defraud Complainant’s custom-ers and prospective franchisees.

 

Respondent has neither any rights to nor any legitimate interests in the domain name <radioshackfranchise.net>.

 

Respondent has a history of cybersquatting.

 

Respondent employs the disputed domain name to attempt to confuse visitors to its website and to disrupt Complainant’s business.

 

Respondent knew of Complainant’s rights in the RADIOSHACK mark when it registered the disputed domain name.

 

Respondent’s use of the <radioshackfranchise.net> domain name is in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent 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 can-celled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 representa-tions 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 Verti-cal 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 reason-able inferences of fact in the allegations of a UDRP 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 has rights in its RADIOSHACK mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), concluding that a UDRP complainant’s trademark registration with the USPTO sufficiently proved that complainant’s rights in the mark. 

 

Turning to the central question arising under Policy¶ 4(a)(i), we conclude from our review of the record that the <radioshackfranchise.net> domain name is confusingly similar to Complainant’s RADIOSHACK mark.  The domain name includes the entire mark, adding only the generic term “franchise,” which relates to an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.net.”  These alterations of the mark, made in forming the domain name, do not save the domain name from a finding of confusing similarity under the standards of the Policy.  See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):

 

[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.

 

See also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent has not been commonly known by the contested domain name <radioshackfranchise.net>, and that Respondent is not licensed to use the RADIOSHACK mark in any way.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Playdues Inc,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the meaning of Policy ¶ 4(c)(ii).  See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003), holding that a respondent failed to demonstrate that it was commonly known by a disputed domain name so as to have shown that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii). 

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent lacks rights to or legitimate interests in the disputed domain name in that Respondent unauthorizedly employs the domain name to offer information on its resolving website for becoming a franchisee of Complainant, and that Respondent profits from the operation of that website by charging Internet users a fee to obtain a “key” to access the information after a thirty-day trial period.  This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See, for example, Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010).

 

Complainant further contends, again without objection from Respondent, that Respondent attempts to defraud consumers by requiring website visitors to disclose personal information in order to obtain access to downloadable software or franchising information.  This is likewise neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).   See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel there concluding that a respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a contested domain name where it set up a fraudulent scheme to mislead consumers into providing credit card and other personal information.

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).  

 

Registration and Use in Bad Faith

 

We are persuaded from our review of the evidence that Respondent has a record of “cybersquatting,” in that it has repeatedly registered domain names that em-ploy the marks of others, as reflected by its being named as a respondent in other UDRP proceedings that resulted in the transfer of domain names to various UDRP complainants.  See, for example, World Travel Holding, Inc. v. Paydues, Inc., D2012-1128 (WIPO July 27, 2012); see also Crunch IP Holdings, LLC v. Paydues Inc., D2012-1033 (WIPO June 22, 2012).  This pattern evidences bad faith in the registration and use of the instant domain name under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith domain name registrations).

 

We are likewise satisfied from the evidence that Respondent’s employment of the contested domain name in the manner alleged in the complaint disrupts Complainant’s business.  This stands as independent proof of bad faith regis-tration and use of the domain name under Policy ¶ 4(b)(iii).  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006), where a panel concluded that a re-spondent’s registration and use of a disputed domain name was in bad faith under Policy¶ 4(b)(iii) in that it disrupted a UDRP complainant’s business.

 

It is also apparent from the record that Respondent employs a “phishing” scheme in an attempt to gain Internet users’ personal information in exchange for pur-ported franchise software, which is itself evidence of Respondent’s bad faith registration and use of the domain name.  See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006), holding that a respondent demonstrated bad faith registration and use of a domain name where it used the domain name to attempt to gain personal and financial information from Internet users visiting the resolving website.

 

Finally, the evidence convinces us that Respondent knew of Complainant’s rights in the RADIOSHACK mark at the time Respondent registered the contested <radioshackfranchise.net> domain name.  This too evidences bad faith in the registration of the domain name.  See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding reasonable grounds to infer that a respondent had actual notice of a complainant's rights in its mark, and therefore registered a disputed domain name in bad faith).

 

Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <radioshackfranchise.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  October 25, 2012

 

 

 

 

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