BEENVERIFIED, INC. v. Whois Privacy Shield Services
Claim Number: FA1409001578011
Complainant is BEENVERIFIED, INC. (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Whois Privacy Shield Services (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beeverified.com>, registered with Pheenix, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2014; the National Arbitration Forum received payment on September 3, 2014.
On September 5, 2014, Pheenix, Inc. confirmed by e-mail to the National Arbitration Forum that the <beeverified.com> domain name is registered with Pheenix, Inc. and that Respondent is the current registrant of the name. Pheenix, Inc. has verified that Respondent is bound by the Pheenix, 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 September 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@beeverified.com. Also on September 8, 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 October 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Complaint:
1. Complainant holds rights in the BEENVERIFIED mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,810,610 registered June 29, 2010). Complainant uses the BEENVERIFIED mark in connection with background investigation and research services. The <beeverified.com> domain name is confusingly similar to the BEENVERIFIED mark.
2. Respondent lacks rights in the disputed domain name. The evidence does not indicate that Respondent is or was commonly known by the disputed domain name. Further, Complainant has not authorized Respondent’s use of the mark. The <beeverified.com> domain name does not appear to be currently active. The domain name resolves to a parked website, which promotes hyperlinks to commercial websites.
3. Respondent has engaged in bad faith. The landing page for <beeverified.com> is a parked page listing links to other commercial websites. Respondent had actual and constructive notice of Complainant’s rights in the BEENVERIFIED mark.
B. Response:
1. Respondent did not submit a response.
1. Respondent’s <beeverified.com> domain name is confusingly similar to Complainant’s BEENVERIFIED mark.
2. Respondent does not have any rights or legitimate interests in the <beeverified.com> domain name.
3. Respondent registered or used the <beeverified.com> 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 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 BEENVERIFIED mark in connection with background investigation and research services. Complainant claims to hold rights in the BEENVERIFIED mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,810,610 registered June 29, 2010). The Panel agrees that Complainant’s USPTO registrations satisfy the initial requirements of Policy ¶ 4(a)(i) by demonstrating rights in the BEENVERIFIED mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues the <beeverified.com> domain name is confusingly similar to the BEENVERIFIED mark. Complainant urges the name merely omits the letter “n” from the otherwise incorporated mark, and adds the generic top-level domain (“gTLD”) “.com.” Notably here, the panel in Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005), held that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i” and added the gTLD “.com.” Accordingly, the Panel finds the <beeverified.com> domain name confusingly similar to the BEENVERIFIED mark pursuant to Policy ¶ 4(a)(i).
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); 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 asserts that Respondent is not commonly known by the <beeverified.com> domain name, and that Complainant has not authorized Respondent’s use of the mark. The Panel sees the WHOIS record identifies “Whois Privacy Shield Services” as registrant. As the available evidence does not indicate that Respondent is or was commonly known by the disputed domain name, the Panel finds Policy ¶ 4(c)(ii) remains unsatisfied by Respondent. 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).
Further, Complainant argues that the <beeverified.com> domain name resolves to a parked website, which promotes hyperlinks to commercial websites. The Panel sees the landing page at issue features links to “Instant Background Checks,” Public Arrest Records,” and “Background Checks.” See Compl., at Attached Ex. 5. In prior cases where the respondent used a domain name to feature competing hyperlinks, panels have failed to find any bona fide offering or legitimate use. See, e.g., Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Accordingly, the Panel agrees Respondent is not using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues Respondent’s bad faith is demonstrated by the use of the <beeverified.com> domain name in connection with a parked page promoting links to other commercial websites. The Panel recalls the disputed domain name promotes links to websites that appear to offer similar background check services to Complainant, such as “Instant Background Checks,” Public Arrest Records,” and “Background Checks.” See Compl., at Attached Ex. 5. Prior panels have held that the use of a confusingly similar domain name to promote commercial links in competition with the complainant evinces Policy ¶ 4(b)(iv) bad faith. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant. Accordingly, the Panel finds Respondent has engaged in bad faith use and registration under Policy ¶ 4(b)(iv).
Further, Complainant argues Respondent had actual and constructive notice of Complainant’s rights in the BEENVERIFIED mark. In Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), the panel explained that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith. Here, the Panel finds Respondent actual knew of the BEENVERIFIED mark at the time of registration based on the name used for the domain and the use made of it. The Panel infers actual knowledge based on these circumstances, and finds evidence of bad faith pursuant to 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 <beeverified.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 15, 2014
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