RingCentral, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1402001543483
Complainant is RingCentral, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rincentral.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 February 12, 2014; the National Arbitration Forum received payment on February 12, 2014.
On February 14, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <rincentral.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respond-ent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegis-try.com has verified that Respondent is bound by the registration agreement of PDR Ltd. d/b/a PublicDo-mainRegistry.com 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 February 20, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of March 12, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rincentral.com. Also on February 20, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail ad-dresses 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 19, 2014, 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
Founded in 1999, Complainant offers virtual business phone systems to small and mid-sized businesses.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the RINGCENTRAL trademark and service mark (in-cluding Registry No. 3,302,115, filed April 27, 2006, registered October 2, 2007).
Beginning at least as early as 2003, the development of Complainant’s business done under the RINGCENTRAL mark has been accompanied by extensive com-mercial publicity.
Before 2005, Complainant had already delivered millions of units of its software product across the United States and to more than 25 countries worldwide.
In mid-2005, Complainant was honored with an Internet Telephony Innovation Award.
Respondent registered the domain name <rincentral.com> on or about October 13, 2005.
The domain name is confusingly similar to Complainant’s RINGCENTRAL mark.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or legitimately affiliated with Complainant.
Complainant has not given Respondent permission to use its RINGCENTRAL mark in a domain name.
Respondent uses the domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which compete with Com-plainant’s business.
Respondent’s use of the domain name misleads consumers for its own profit.
Respondent has neither any rights to nor any legitimate interests in respect of the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent has listed the domain name for sale.
Respondent is a serial cyber-squatter.
The domain name is an instance of typo-squatting.
The domain name was registered and is being used 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 trademark and 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 RINGCENTRAL trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a nat-ional trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
This is true without regard to whether Complainant’s rights in its ACADEMY mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Saint Vincent and the Grenadines ). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (finding that it does not matter for purposes of Policy ¶ 4(a)(i) whether a UDRP complainant’s mark is registered in a country other than that of a respondent’s place of business).
Complainant also has rights in the mark under the common law owing to its long and continuous use in commerce. See, for example, Artistic Pursuit LLC v. cal-cuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark).
A UDRP complainant must show common law rights in a mark by its acquisition of secondary meaning. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010), the panel there finding that a UDRP complainant had shown secondary meaning in a mark, thereby establishing common law rights in it for purposes of Policy ¶ 4(a)(i), as a consequence of its continuous use over a course of years. This is most often done by reference to evidence of advertising, sales and media recognition.
Here Complainant has demonstrated that, beginning in at least 2003, it has de-veloped its business done under the RINGCENTRAL mark by extensive com-mercial publicity, and that, before 2005, it had already delivered millions of units of its software product across the United States and to more than 25 countries world-wide, and that, in mid-2005, Complainant was honored with an Internet Telephony Innovation Award. This is sufficient to establish secondary meaning, and therefore common law rights in the mark for purposes of the Policy.
Importantly, all of the activities and events which together establish secondary meaning in the mark were in place when Respondent registered the contested <rincentral.com> domain name on or about October 13, 2005. Accordingly, Complainant has proven its rights in the RINGCENTRAL mark, both by regis-tration and under the common law, as well as that its rights under the common law have time priority over any rights that might have been claimed by Respond-ent had it elected to respond to the Complaint filed in this proceeding.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <rincentral.com> domain name is confusingly similar to Complainant’s RINGCENTRAL mark. The domain name differs from the mark only by the omission of a single character and the addition of the generic top-level domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (finding the <pfzer.com> domain name confusingly similar to a UDRP complainant’s PFIZER mark, where a respondent simply omitted the letter “i”).
See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002), the panel there finding, under Policy ¶ 4(a)(i), that attaching a gTLD to the mark of another in creating a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity.”
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 <rincentral.com> domain name, that Respondent is not sponsored by or legitimately affiliated with Com-plainant in any way, and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin / Private Registrations Aktien Gesellschaft,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have acquired rights to or legitimate inter-ests in it within the contemplation of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <rincentral.com> domain name to redirect unsuspect-ing Internet users to a website featuring links to third-party websites, some of which compete with Complainant’s business, and that Respondent presumably profits from the operation of that website. This employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommer-cial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate inter-ests in the <bravoclub.com> domain name where that respondent was using the domain name to operate a website containing links to various competing com-mercial websites, which the 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 from the evidence presented that Respondent is a serial cyber-squatter, having been a party to several UDRP decisions in which con-tested domain names were transferred to various complainants on findings of bad faith in the registration and use of those domain names. See Univision Communications Inc. v. Domain Admin / Private Registrations Atkien Gesell-schaft, FA 1536966 (Nat. Arb. Forum Jan. 28, 2014); Autodesk, Inc. v. Domain Admin / Private Registrations Atkien Gesellschaft, D2013-1930 (WIPO Jan. 20, 2014); Orbitz Worldwide, LLC v. Private Registrations Atkien Gesellschaft / Do-main Admin, FA 1535412 (Nat. Arb. Forum Jan. 25, 2014). Under Policy ¶ 4(b)(ii), this pattern of abusive domain name registration and use is indicative of bad faith in the registration and use of the instant domain name. See, for ex-ample, Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining, Policy ¶ 4(b)(ii), that a respondent’s prior UDRP rulings were evidence of bad faith registration under of the domain name there under consideration).
We are also convinced by the evidence that Respondent’s employment of the <rincentral.com> domain name, which is confusingly similar to Complainant’s RINGCENTRAL mark, to profit from confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name is indicative of bad faith in the registration and use of the domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), concluding, under Policy ¶ 4(b)(iii):
Respondent’s … domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to … products and services that directly compete with Com-plainant’s business. Accordingly, Respondent’s competing use of the … domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Finally, under this head of the Policy, it is apparent that the <rincentral.com> domain name is an example of typo-squatting, i.e.: the creation of a domain name that is confusingly similar to the mark of another in order to take advantage of common spelling or typing errors made by Internet users in entering into a web browser the names of enterprises with which they wish to do business. Typo-squatting is independent evidence of bad faith in the registration and use of a domain name. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Respondent’s registration and use of [the domain name] that capitalizes on the typographical error of an Internet user is con-sidered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
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 <rincentral.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 31, 2014
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