UniRush, LLC v. K Wall
Claim Number: FA1304001493714
Complainant is UniRush, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is K Wall (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rushcardcom.com>, registered with GODADDY.COM, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 10, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <rushcardcom.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 April 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2013 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@rushcardcom.com. Also on April 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 May 13, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant owns rights in its RUSHCARD mark through its registrations with the United States Patent and Trademark Office “USPTO” (Reg. No.3,959,733 registered May 10, 2011).
a. It is irrelevant for the purposes of this policy whether Complainant registered the mark in the country where Respondent operates or resides.
2. Respondent’s <rushcardcom.com> domain name is confusingly similar to Complainant’s RUSHCARD mark.
a. Respondent’s <rushcardcom.com> domain name includes Complainant’s RUSHCARD mark in its entirety.
b. Respondent also adds the generic top-level domain (“gTLD”) “.com” and the generic term “com” immediately after Complainant’s mark.
3. Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <rushcardcom.com> domain name.
b. Respondent is not sponsored or affiliated with Complainant or its business.
c. Complainant has not authorized Respondent to use any of Complainant’s marks in any way.
d. Respondent failed to reply to Complainant’s “Cease and Desist letter.”
e. Respondent’s disputed domain name resolves to a site offering links to third parties that compete with Complainant.
f. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
g. The earliest date on which Respondent registered the <rushcardcom.com> domain name was March 29, 2011, which was after Complainant’s first use on January 17, 2003.
4. Respondent registered and is using the <rushcardcom.com> domain name in bad faith.
a. Respondent’s website features links to third parties that compete with Complainant and thereby disrupt Complainant’s business.
b. Respondent is using the disputed domain name to attract and mislead consumers for its own profit by featuring pay-per-click links associated with Complainant’s business.
c. Respondent features advertisements and third party links on its resolving website thereby diverting consumers away from Complainant and disrupting Complainant’s business.
d. Respondent’s disputed domain name is listed for sale.
e. Respondent is a serial typosquatter.
f. Respondent holds other domain names that appear to be examples of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its RUSHCARD mark.
2. Respondent’s <rushcardcom.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.
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.”).
Complainant argues it has rights in the RUSHCARD mark through its numerous registrations with the USPTO (Reg. No.3,959,733 registered May 10, 2011). Previous panels have found that evidence of a registration with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel notes that it is irrelevant whether Complainant registered the mark in the country where a respondent operates or resides, only that a complaint can demonstrate rights in some jurisdiction. See 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 Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel therefore finds that complainant has rights in the RUSHCARD mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <rushcardcom.com> domain name is confusingly similar to Complainant’s RUSHCARD mark. Complainant claims Respondent’s <rushcardcom.com> domain name is comprised of Complainant’s RUSHCARD mark in its entirety with the addition of the gTLD “.com.” Complainant also points out that Respondent adds the generic term “com” after Complainant’s mark. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). The Panel find thats Respondent’s <rushcardcom.com> domain name is confusingly similar to Complainant’s RUSHCARD mark under Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the <rushcardcom.com> domain name because it is not commonly known by it. Complainant claims that Respondent is not sponsored by or affiliated with complainant in any way. Complainant further argues that it has not given Respondent permission to use Complainant’s RUSHCARD mark. The Panel notes that the WHOIS information for the disputed domain name lists “K Wall” as Registrant. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence in the record indicating that respondent was commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and thus has no rights or interests in the disputed domain name.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name. Complainant contends that Respondent’s disputed domain name resolves to a website offering advertisements and third party links intending to redirect Internet users to other businesses. Complainant claims that Respondent’s resolving website features links such as “Prepaid card no fees” that resolve to a third party website to apply for a prepaid debit card. The Panel notes that Respondent’s resolving website also features advertisements such as “Save up to 90% Off on Local Deals! Click Here!” and “Win your Gown or up to 5 bridesmaids dresses.” Previous panels have found that using a disputed domain name to feature related and unrelated hyperlinks as well as third party advertisements is not a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”) The Panel finds therefore that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). Complainant alleges that Respondent’s disputed domain name is listed for sale. See Exhibit Q. Complainant claims that offers to sell the confusingly similar disputed domain name to which Respondent has no rights to is evidence of bad faith. Previous panels have found that a respondent’s attempt to sell a disputed domain name indicates bad faith use and registration. 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).”). The Panel agrees. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii). Complainant provides the Panel with evidence of Respondent’s pattern of cybersquatting behavior through previously decided UDRP decisions holding that Respondent engaged in bad faith. See Wells Fargo & Co. v. k wall a/k/a PrivacyProtect.org / Domain Admin, FA1404146 (Nat. Arb. Forum Oct. 19, 2011); see also Delmas and & CMA CGM v. K Wall, D2012-1452 (WIPO Aug. 20, 2012); see also Exhibit N. Previous panels have found that evidence of prior UDRP proceedings that resulted in findings of bad faith and transfer indicates 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). Based on the evidence provided by Complainant, the Panel finds that Respondent registered the disputed domain name and is using it in bad faith under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Complainant asserts that Respondent’s website resolving from the disputed domain name features links redirecting Internet users to sites competing with Complainant’s business. Complainant also asserts that Respondent features pay-per-click links on its resolving website, promoting products that also compete with Complainant. Complainant claims that Respondent’s use of the disputed domain name to feature competing third party links disrupts Complainant’s business and diverts consumers away from Complainant’s business. Previous panels have found that this type of use indicates bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”) The Panel finds that Respondent’s use indicates registration and use in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent is receiving revenue from the misdirected, confused Internet users that are diverted to Respondent’s website. Complainant contends that Respondent is confusing potential customers as to Complainant’s affiliation with the disputed domain name through the use of the confusingly similar <rushcardcom.com> domain name. Complainant claims that Respondent is using the website resolving from the disputed domain name to attract and mislead consumers for its own profit by providing click through links from which Respondent collects fees. Complainant further asserts that some of the links present on Respondent’s resolving website feature Complainant’s RUSHCARD mark spelled correctly. Previous panels have found when a respondent uses a confusingly similar domain name to resolve to a website featuring competing links and advertisements as well as featuring Complainant’s mark, indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> 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.’”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). Therefore, the Panel finds that Respondent’s actions indicate registration and use in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rushcardcom.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 27, 2013
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