BEENVERIFIED, INC. v. VELILLA J GO
Claim Number: FA1409001578013
Complainant is BEENVERIFIED, INC. (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is VELILLA J GO (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beenverified-com.com>, registered with eNom, Inc.
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 September 2, 2014; the National Arbitration Forum received payment on September 3, 2014.
On September 3, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <beenverified-com.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@beenverified-com.com. Also on September 4, 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 29, 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
Complainant owns 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 mark to provide background investigation and research services. The <beenverified-com.com> domain name is confusingly similar to the BEENVERIFIED mark.
Respondent lacks any rights or legitimate interests in the <beenverified-com.com> domain name. Respondent is not authorized to use the mark. Respondent is neither commonly known by, nor does business under, the <beenverified-com.com> name. Respondent uses the domain name to operate a click-through website relying on links to websites of Complainant’s competitors relating to background investigation services.
Respondent has engaged in bad faith use and registration. Respondent is in violation of Policy ¶ 4(b)(iii) as the domain name is used to promote competitors of Complainant, which serve to disrupt Complainant’s business. Further, Respondent is generating click-through revenue from the linked pages, and therefore falls within Policy ¶ 4(b)(iv). Finally, Respondent had actual and constructive notice of Complainant’s mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant BEENVERIFIED, INC. of New York, NY, USA, is the owner of domestic registrations for the mark BEENVERIFIED which it has used continuously since at least as early as 2006. Complainant uses the mark in connection with Complainant’s provision of services related to background investigation and research. Complainant is also the owner of registrations for numerous websites for its services including <beenverified.com>.
Respondent is VELILLA J GO of Santa Monica, CA, USA. Respondent’s registrar’s address is listed as Kirkland, WA, USA. The Panel notes that the <beenverified-com.com> domain name was registered on or about March 13, 2014.
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 to provide background investigation and research services. Complainant claims to own 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). Prior panels have found a valid USPTO registration sufficient to demonstrate Policy ¶ 4(a)(i) rights in the 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)). The Panel here finds that Complainant’s USTPO registration of the BEENVERIFIED mark satisfies the proof of rights requirement in Policy ¶ 4(a)(i).
Complainant claims the <beenverified-com.com> domain name is confusingly similar to the BEENVERIFIED mark, because the name incorporates the BEENVERIFIED mark and merely adds the word “com,” a hyphen, and generic top-level domain name (“gTLD”). In Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013), the panel found, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen. The Panel here finds that the inclusion of a generic term, a hyphen, and gTLD are insufficient to distinguish the <beenverified-com.com> domain name from the BEENVERIFIED mark pursuant to the Policy ¶ 4(a)(i) confusing similarity analysis.
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.
In arguing that Respondent lacks any rights or a legitimate interest in the <beenverified-com.com> domain name, Complainant asserts that Respondent is not authorized to use the mark. Complainant further stresses that Respondent is neither commonly known by, nor does business under, the <beenverified-com.com> name. The Panel notes that the WHOIS information identifies “VELILLA J GO” as the registrant of record. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found 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. Based on the WHOIS information presented by Complainant and Respondent’s failure to present any contrary evidence in the instant case, the Panel finds that Respondent is not commonly known by the <beenverified-com.com> name for the purposes of Policy ¶ 4(c)(ii).
Complainant claims Respondent uses the domain name to operate a click-through website to promote links to websites of Complainant’s competitors. Complainant argues such use is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel notes that the Complainant included a screenshot from <inteligator.com> whereby Respondent linked visitors of its <beenverified-com.com> domain name. Prior panels have determined that the use of a confusingly similar domain name to redirect users to competing hyperlinks and services does not fall within the protections of a legitimate or fair use as envisioned in Policy ¶ 4(a)(ii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see alsoTM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel here finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
Complainant asserts that Respondent has subsequently altered the landing page so that the disputed domain name now resolves to Complainant’s own website at <beenverified.com>. Complainant argues that Respondent’s actions should not play a mitigating role in the Panel’s decision. The Panel finds that Respondent’s post complaint efforts to resolve the disputed domain name to Complainant’s own website do not allow Complainant to escape an adverse ruling under Policy ¶ 4(a)(ii). See MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (“The Respondent’s adoption of the disputed domain name was clearly calculated to attract Internet users seeking the Complainant’s website. The Respondent was not authorized to use the Complainant’s mark in this way, and such conduct is inherently misleading. As such, it cannot give rise to a right or legitimate interest in the disputed domain name.”); see also Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
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 Respondent is in violation of Policy ¶ 4(b)(iii) as the domain name is used to promote competitors of Complainant, which serves to disrupt Complainant’s business. The Panel again notes that Respondent previously resolved the disputed domain name to <inteligator.com>, a competing background checking service. The Panel finds that such competing use evinces bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant additionally contends that Respondent is generating click-through revenue from the redirected traffic siphoned through the disputed domain name. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that the respondent engaged in bad faith use and registration under Policy ¶ 4(b)(iv) by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant. The Panel here finds that Respondent’s efforts to mislead users into associating Complainant with the <beenverified-com.com> domain name and resolving content indicates bad faith pursuant to Policy ¶ 4(b)(iv), as Respondent is attempting to commercially gain from the scheme.
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 <beenverified-com.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 13, 2014
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