Safelite Group, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1408001575075
Complainant is Safelite Group, Inc. (“Complainant”), represented by Thomas A. Walsh of ICE MILLER LLP, Indiana, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safelitecoupon.com>, registered with Internet.bs Corp..
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 19, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <safelitecoupon.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2014 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@safelitecoupon.com. Also on August 21, 2014, 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 September 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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.
A. Complainant
i. Complainant owns the SAFELITE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,242,375, registered May 4, 1999).
ii. Complainant uses the SAFELITE mark in connection with its glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods.
i. Policy ¶ 4(a)(i)
1. The <safelitecoupon.com> domain name is confusingly similar to Complainant’s SAFELITE mark because Respondent has simply added the generic term “coupon” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <safelitecoupon.com> domain name. Respondent is neither licensed nor authorized by Complainant to use the SAFELITE mark.
3. Respondent’s web page offers generic coupons and falsely claims to offer promo codes for SAFELITE services. This causes confusion or mistake to confused Internet users.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the domain name to mislead confused Internet users to its own website.
2. Respondent registered and used the disputed domain name to trade off Complainant’s reputation and tried to create a sort of affiliation with Complainant.
3. Respondent had actual notice of Complainant’s rights in the mark, due to the generic references made to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Safelite Group, Inc. of Columbus, OH, USA, owns multiple domestic registrations for the mark SAFELITE and variations thereof. Complainant has continuously used the SAFELITE mark since at least as early as 1999 in connection with its glass installation services for automobiles as well as with the sale of automotive glass installation goods.
Respondent is Fundacion Private Whois / Domain Administrator, Panama. Respondent’s registrar’s address is listed as Miami, FL, USA. Respondent registered the disputed domain name on or about December 13, 2011.
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 uses the SAFELITE mark in connection with its glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods. Complainant claims to own the SAFELITE mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,242,375, registered May 4, 1999). Complainant argues that its registrations are sufficient to establish rights in the SAFELITE mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel here finds that Complainant’s registrations with the USPTO satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <safelitecoupon.com> domain name is confusingly similar to Complainant’s SAFELITE mark because Respondent has simply added the generic term “coupon” to the mark. The Panel notes that the disputed domain name differs from Complainant’s mark by the affixation of the generic top-level domain (“gTLD”) “.com.” Prior panels have found that a domain name differing from a mark by only the addition of a generic term does not escape confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). The Panel here finds that Respondent’s addition of the generic term “coupon” and the affixation of a gTLD does not preclude a finding that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
It is Complainant’s contention that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the <safelitecoupon.com> domain name. The Panel notes that the WHOIS information identifies “Domain Administrator” as the registrant of the disputed domain name. Further, Complainant states that Respondent is neither licensed nor authorized to use the SAFELITE mark. The Panel further notes that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to the contrary, the Panel finds that Respondent is not commonly known by the <safelitecoupon.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Additionally, Complainant argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that the disputed domain name is used to divert confused Internet users to its own web page for commercial gain. Further, Complainant insists that Respondent’s web page falsely claims to offer promo codes for Safelite services, but it does not contain any Safelite promotional codes, nor any link to Safelite’s actual web page. The Panel notes that Complainant has provided a screenshot of the disputed domain name web page. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the respondent used the disputed domain name to provide various links to other web pages for its own commercial gain. For example, in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel held that the respondent’s demonstrated intent to divert Internet users seeking the complainant’s website to a website of the respondent and for the respondent’s benefit was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it was not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel here finds that Respondent’s behavior is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent currently uses the disputed domain name for commercial gain by diverting confused Internet users searching for Complainant’s services to its own web page. Respondent’s web page contains no promotional codes for Safelite, nor any link to Safelite’s web page. Complainant contends that such behavior constitutes bad faith pursuant to Policy ¶ 4(b)(iv). Prior panels have agreed with Complainant’s argument. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). The Panel here finds that Respondent’s use of the disputed domain name in the manner noted supports a finding of Policy ¶ 4(b)(iv) bad faith.
Complainant also argues that Respondent registered and used the disputed domain name to trade off Complainant’s reputation and tried to create an affiliation with Complainant. Prior panels have found such behavior to be evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). The Panel here finds that Respondent’s behavior in attempting to affiliate itself with Complainant is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <safelitecoupon.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 30, 2014
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