Arredondo & Company, LLC v. Whois Privacy Protection Service, Inc.
Claim Number: FA1307001508155
Complainant is Arredondo & Company, LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Whois Privacy Protection Service, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westystorage.com>, registered with GODADDY.COM, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 3, 2013, and the National Arbitration Forum received payment on July 3, 2013.
On July 5, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arb-itration Forum that the <westystorage.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 registration agreement of 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 July 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2013 by which Re-spondent 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@westystorage.com. Also on July 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 2, 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 WESTY mark since at least December 15,1997, and prior to that, the WESTY’S mark, beginning January 1, 1991, in connection with the marketing of its self-storage facilities in the northeastern United States.
Complainant owned the <westystorage.com> domain name from 2001 to 2011.
Respondent registered the <westystorage.com> domain name on January 2, 2012.
Respondent was able to register the disputed domain name at that time because Complainant failed to pay the necessary registration renewal fee, causing the do-main name registration to be inadvertently deleted.
Complainant holds a registration for the WESTY service mark, on file with the United States Patent & Trademark Office (“USPTO”) (Registry No. 4,173,283, filed September 3, 2002, registered July 17, 2012).
The disputed domain name is confusingly similar to Complainant’s WESTY mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not authorized Respondent to use its WESTY mark.
Respondent is not making a bona fide offering of goods or services by means of or a legitimate noncommercial or fair use of the domain name.
Respondent employs the disputed domain name to operate a pay-per-click web-site, which features search categories that connect to web pages displaying ad-vertisements for storage services competing with the business of Complainant.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
Respondent has offered to sell the disputed domain name for $8,800, which is in excess of its documented out-of-pocket expenses to acquire the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent uses the disputed domain name to attract Internet users for its com-mercial gain by creating a likelihood of confusion among Internet users with regard to a possible affiliation with Complainant’s WESTY mark.
Respondent knew of Complainant and its rights in the WESTY mark when it reg-istered the disputed 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 WESTY service mark for purposes of Policy ¶ 4(a)(i) by reason if its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant’s rights in its mark are senior to any Respondent might claim in its domain name because trademark rights based on registration with a national trademark authority relate back to the filing date of the trademark registration application (here September 3, 2002), which greatly precedes Respondent’s registration of the disputed domain name on January 2, 2012. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003):
As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <westystorage.com> domain name is confusingly similar to Complainant’s WESTY mark. The domain name contains Complain-ant’s mark in its entirety, along with the descriptive term “storage,” which relates to Complainant’s business, and the gen-eric top level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to a UDRP complainant’s NOVELL mark despite the addition of the descriptive term “solu-tions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
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 creating 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) (holding 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 re-spondent 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 out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name and that Complainant has not authorized Respondent to use its WESTY mark. Moreover, the WHOIS information for the <westystorage.com> domain name identifies the domain name registrant only as “Whois Privacy Protection Service, 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 acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed do-main names, and so had no rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <westystorage.com> domain name, in that Respondent uses the domain name to operate a pay-per-click website featuring search categories that connect to web pages displaying advertisements for storage services competing with the business of Complainant. 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent used the domain name to operate a website containing links to commercial websites operating in compe-tition with the business of a UDRP complainant, which a panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <westystorage.com> domain name, which is confusingly similar to the Complainant’s WESTY service mark, disrupts Complainant’s business as alleged in the Complaint. This stands as proof of bad faith registration and use of the do-main name under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which is confusingly similar to the mark of another in order to attract Internet users to a directory website containing commercial links to the websites of a complainant’s commercial competitors represents evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the disputed domain name to attract Internet users in exchange for its commercial gain, all as alleged in the Complaint, creates a likelihood of confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website. This demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites featuring services similar to those of a UDRP complainant).
For these Reasons, the Panel 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 <westystorage.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 13, 2013
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