Immihelp, LLC v. Above.com Domain Privacy
Claim Number: FA1302001484171
Complainant is Immihelp, LLC (“Complainant”), represented by Fritz L Schweitzer of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mockimmihelp.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflicts of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 8, 2013; the National Arbitration Forum received payment on February 8, 2013.
On February 10, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the Nat-ional Arbitration Forum that the <mockimmihelp.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and has thereby agreed to re-solve domain disputes brought by third parties in accordance with ICANN’s Uni-form Domain Name Dispute Resolution Policy (the “Policy”).
On February 11, 2013, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of March 4, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@mockimmihelp.com. Also on Feb-ruary 11, 2013, 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 March 15, 2013, 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 Not-ices, 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 has used the IMMIHELP mark for more than 13 years in connection with the provision of immigration and insurance information services.
Complainant has registered the IMMIHELP mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 3,052,819, registered January 31, 2006).
Respondent registered the disputed <mockimmihelp.com> domain name on July 30, 2012.
The disputed domain name is confusingly similar to Complainant’s IMMIHELP service mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not authorized Respondent to use its IMMIHELP mark.
Respondent employs the domain name to operate a commercial, click-through website that diverts Internet users to websites that market immigration and visa-related services which compete with the business of Complainant.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent uses the domain name, for commercial gain, to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
Respondent had actual or constructive notice of Complainants mark when it reg-istered the contested domain name.
Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark 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.
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 a 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.”
Complainant has rights in the IMMIHELP service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
This is true without regard to whether Complainant has acquired rights in its mark by registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Australia). See Konin-klijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <mockimmihelp.com> domain name is confus-ingly similar to Complainant’s IMMIHELP mark. The disputed domain name con-tains Complainant’s entire mark, with the addition of the generic term “mock” and the generic Top Level Domain (“.com”). These alterations of the mark, made in creating the domain name, do not save it from the realm of confusing similarity. We take the inclusion of “mock” to be an attempt by Respondent to place the do-main name within the protected category of criticism domain names, best exem-plified by the use of such included terms as “sucks.” However, as will be discus-sed more fully under the heading next below, Respondent’s employment of the domain name does not involve the exercise of critical free speech rights, but rather the more mundane motive of profit-making. See Caixa d’Estalvis y Pensions de Barcelona ("La Caixa") v. Namezero.com, D2001-0360 (WIPO May 3, 2001), finding that:
[t]he general principle taught by precedents seems to be that, when a –SUCKS domain name has been registered for the main purpose of making money, it has been registered in bad faith, while when the purpose was really to provide criticism, political or otherwise, a finding of bad faith would not be appropriate.
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in forming a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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) (finding that a 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 branch 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 names. 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 finding 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 names 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 disputed domain name, and that Respondent is not authorized by Complainant to make use of the mark IMMIHELP. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Above.com Domain Privacy,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in it as described in Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complain-ant asserted that it did not authorize that respondent’s use of its mark in a do-main name).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the disputed domain name to redirect Internet users to commercial websites that market immigration and visa-related services which compete with the business of Complainant. This employment of the domain name 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). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (finding that a respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where “the website resolving from the disputed domain name displays links to … products and services, which directly compete with Complainant’s business”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy 4(a)(ii).
We are persuaded from the evidence that Respondent’s use of the disputed <immihelp.com> domain name, as alleged in the Complaint, disrupts Complain-ant’s business. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using a resolving website to divert Internet users to a UDRP complainant’s competitors constituted bad faith registration and use of a domain name under Policy ¶ 4(b)(iii)).
We are likewise convinced that by exploiting, for commercial gain, a domain name that is confusingly similar to Complainant’s IMMIHELP service mark, Re-spondent has shown bad faith in the registration and use of the domain name within the meaning of Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
Finally, it is evident from the record that Respondent knew of Complainant and its rights in the IMMIHELP mark when it registered the contested domain name. This is proof of bad faith in the registration of the domain name. SeeYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware” of a UDRP complainant's mark at the time of its domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <mockimmihelp.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 21, 2013
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