UniRush, LLC v. Private Registration / Private Registration - bmon / Private Whois / Private Registration (EXP)
Claim Number: FA1304001494703
Complainant is UniRush, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registration / Private Registration - bmon / Private Whois / Private Registration (EXP) (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rrushcard.com>, <rushcad.com>, <rushcardvisa.com>, and <rushvard.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2013; the National Arbitration Forum received payment on April 12, 2013.
On April 15, 2013, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <rrushcard.com>, <rushcad.com>, <rushcardvisa.com>, and <rushvard.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@rrushcard.com, postmaster@rushcad.com, postmaster@rushcardvisa.com, and postmaster@rushvard.com. Also on April 17, 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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the RUSHCARD mark. Respondent’s <rrushcard.com>, <rushcad.com>, <rushcardvisa.com>, and <rushvard.com> domain names are confusingly similar to Complainant’s RUSHCARD mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <rrushcard.com>, <rushcad.com>, <rushcardvisa.com>, and <rushvard.com> domain names, and that Respondent registered and uses the domain names 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, UniRush, LLC, argues that it changed the payments industry when it launched one of the first reloadable prepaid Visa debit cards, the RushCard. Complainant contends that it is the owner of trademark registrations with the USPTO for the RUSHCARD mark (e.g., Reg. No. 2,826,230, registered March 23, 2004). Although Respondent appears reside in the Cayman Islands, it is not necessary that Complainant has registered its trademark in the country of Respondent’s residence under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Consequently, Complainant’s registration of the RUSHCARD mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. For example, Respondent adds an additional letter “r” to the <rrushcard.com> domain name. The addition of a letter to a disputed domain name does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark).
Respondent simply removes a letter in the <rushcad.com> domain name. The removal of a letter in a domain name does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
Respondent adds the descriptive term “visa” to the <rushcardvisa.com> domain name. Respondent’s addition of a descriptive term to the disputed domain name does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
Respondent substitutes the letter “c” for the letter “v” in the <rushvard.com> domain name. Respondent’s substitution of letters in a domain name does not negate confusing similarity under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
Finally, Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain names. Respondent’s addition of gTLDs to a disputed domain name is irrelevant under a Policy ¶ 4(a)(i) analysis. 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). Accordingly, the Panel concludes that Respondent’s <rrushcard.com>, <rushcad.com>, <rushcardvisa.com>, and <rushvard.com> domain names are confusingly similar to Complainant’s RUSHCARD mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent has not been commonly known by the disputed domain names. The WHOIS information identifies “Private Registration / Private Registration - bmon / Private Whois / Private Registration (EXP)” as the registrant of the disputed domain names. Complainant argues that Respondent is not sponsored by or legitimate affiliated with Complainant in any way. Complainant contends that it has not given Respondent permission to use Complainant’s mark in a domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent is using some or all of 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. Respondent’s domain names resolve to web sites featuring competing links such as “Rushcard,” “Prepaid Debit Cards,” “AccountNow Prepaid Visa,” and others. Complainant claims that Respondent receives pay-per-click fees from these linked websites. Consequently, the Panel concludes that Respondent’s use of the disputed domain names to list competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is a recalcitrant, serial cybersquatter/typosquatter. Complainant argues that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. E.g., Thornburg Investment Management, Inc. v. Private Registration, FA 1403913 (Nat. Arb. Forum Oct.18, 2011); National Westminster Bank plc v. Private Registration-bmon, FA 1292099 (Nat. Arb. Forum Dec. 31, 2009). Thus, the Panel determines that Respondent’s prior UDRP proceedings that resulted in findings of bad faith demonstrate bad faith use and registration 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 registrations).
Complainant argues that Respondent’s links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Complainant claims that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel notes that Respondent’s domain names resolve to web sites featuring competing links such as “Rushcard,” “Prepaid Debit Cards,” “AccountNow Prepaid Visa,” and others. The Panel holds that Respondent’s use of the disputed domain names to list competing hyperlinks disrupts Complainant’s business, demonstrating bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent registered and used the disputed domain names by using the disputed domain name to attract and mislead consumers for its own profit. Complainant asserts that Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. The Panel finds that Respondent’s use of the disputed domain names to attract Internet users away from Complainant for its own profit shows bad faith use and registration pursuant to 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.’”).
The Panel finds 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 <rrushcard.com>, <rushcad.com>, <rushcardvisa.com>, and <rushvard.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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