Ebates Performance Marketing, Inc. v. Domain Administrator
Claim Number: FA1310001523265
Complainant is Ebates Performance Marketing, Inc. (“Complainant”), represented by Brian M. Davis, North Carolina, USA. Respondent is Domain Administrator (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ebates.co>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 7, 2013; the National Arbitration Forum received payment October 7, 2013.
On October 8, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <ebates.co> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@ebates.co. Also on October 9, 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 November 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Respondent has no apparent pre-existing rights in EBATES as a trademark, service mark, or trade name, and Respondent is not a licensee or affiliate of Complainant.
ii. Respondent is using the disputed domain name to intentionally misdirect consumers to a website that offers links to the websites of entities offering competing products and services.
i. Respondent adopted, registered, and is using the disputed domain name to trade on the fame of Complainant’s mark and to misdirect Internet users to Respondent’s website, thereby disrupting Complainant’s business.
ii. Respondent is using the disputed domain name to deceive users into driving traffic through Respondent’s website to the associated links.
iii. Respondent did not register or begin using the disputed domain name until no earlier than July 20, 2010—long after Complainant’s 1999 first use date of its EBATES mark and after the July 16, 2009 filing date of all of the EBATES registrations.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
The disputed domain name is identical to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant contends that it is the owner of the trademark EBATES. Complainant says it has utilized the EBATES mark in connection with the provision of online rebate, cash back, and advertising services, and the distribution of online coupons for various third-party consumer goods and services. Complainant claims that it is the owner of trademark registrations with the USPTO for the EBATES mark (e.g., Reg. No. 3,852,239, filed July 16, 2009; registered September 28, 2010). See Exhibit 1. The Panel observes that Respondent appears to reside within the United States. Therefore, the Panel finds that Complainant’s registration of the EBATES mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel further finds that such rights date back to July 16, 2009, the date on which Complainant filed its trademark registration with the USPTO. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant asserts that Respondent’s <ebates.co> domain name is identical to Complainant’s EBATES mark, except that it includes the ccTLD “.co.” In Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009), the panel held that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.” The Panel holds that Respondent’s inclusion of a ccTLD does not negate a finding that the name is identical under a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s <ebates.co> domain name is identical to Complainant’s EBATES mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 alleges that Respondent has no apparent pre-existing rights in EBATES as a trademark, service mark, or trade name, and that Respondent is not a licensee or affiliate of Complainant. The Panel notes that the WHOIS information identifies “Domain Administrator” as the registrant of the <ebates.co> domain name. See Exhibit 2. The Panel also notes that Respondent fails to provide any information that it is known by the domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <ebates.co> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent is using the <ebates.co> domain name to intentionally misdirect consumers to a website that offers links to the websites of entities offering competing products and services. Complainant contends that Respondent is using the disputed domain name to lead users to various third-party coupon-related or “cash back” websites, to sites that feature coupon codes for use online, and to various third-party retail websites that are also featured on Complainant’s site. See Exhibit 5. The Panel observes that Respondent’s domain name leads to a website that provides competing coupon links such as “$2.95 .COMS AT GODADDY,” “PRINTABLE COUPONS HERE,” and others. Id. Prior panels have held that a respondent’s use of a domain name to provide competing hyperlinks is not a bona fide offering of goods or services or a 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). Therefore, the Panel finds that Respondent is not using the <ebates.co> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent adopted, registered, and is using the <ebates.co> domain name to trade on the fame of Complainant’s mark and to misdirect users to Respondent’s website, thereby disrupting Complainant’s business. The Panel notes that Respondent’s disputed domain name leads to a webpage providing competing coupon hyperlinks titled “$2.95 .COMS AT GODADDY,” “PRINTABLE COUPONS HERE,” and others. See Exhibit 5. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel concluded that: “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business.” Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Therefore, the Panel finds that Respondent disrupted Complainant’s business, demonstrating bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent is using the <ebates.co> domain name to deceive users into driving traffic through Respondent’s website to the associated links. The Panel observes that Respondent’s disputed domain name features links to Complainant’s competitors, such as “$2.95 .COMS AT GODADDY,” “PRINTABLE COUPONS HERE,” and others. See Exhibit 5. The Panel notes that Respondent presumably commercially benefits through its use of the <ebates.co> domain name. Thus, the Panel finds that Respondent is using the disputed domain name to attract Internet users to its own website for commercial gain, proving bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant contends that Respondent did not register or begin using the <ebates.co> domain name until no earlier than July 20, 2010—long after Complainant’s 1999 first use date of its EBATES mark and after the July 16, 2009 filing date of all of the EBATES registrations. See Exhibit 1. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <ebates.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 18, 2013.
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