national arbitration forum

 

DECISION

 

LifeLock, Inc. v. Adam Viener / ThunkTunk LLC

Claim Number: FA1409001579875

 

PARTIES

Complainant is LifeLock, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Adam Viener / ThunkTunk LLC (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lifelocl.com>, registered with Moniker Online Services LLC.

 

PANEL

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.

 

Scott R. Austin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2014; the National Arbitration Forum received payment on September 16, 2014.

 

On September 17, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <lifelocl.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name.  Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@lifelocl.com.  Also on September 22, 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 the

Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on October 6, 2014.

 

On October 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Scott R. Austin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant makes the following contentions:

1.            Complainant, LifeLock, Inc., is a nationally recognized provider of proactive identity theft protection services for consumers and identity risk assessment and fraud protection services for enterprises and is listed on the New York Stock Exchange.

2.            Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIFELOCK mark, including Reg. No. 3,232,956, filed April 21, 2006, registered April 24, 2007, and asserting the LIFELOCK mark was first used in interstate commerce at least as early as May 1, 2005; and Reg. No. 3,346,847, filed November 10, 2006, registered December 4, 2007, and asserting the LIFELOCK mark was first used in interstate commerce at least as early as May 1, 2005.

3.            Respondent’s disputed domain name <lifelocl.com> is confusingly similar to Complainant’s LIFELOCK mark.

4.            Respondent has no rights or legitimate interests in the disputed domain name.

5.            Respondent is not sponsored by or legitimately affiliated with Complainant in any way.

6.            Complainant has not given Respondent permission to use Complainant's mark in a domain name.

7.            Respondent has never been commonly known by the disputed domain name.

8.            The website at the disputed domain name contains only a search entry field labeled “Search Ads,” and several sponsored, click-through advertisements redirecting Internet users to third-party websites, including the websites of some of Complainant’s competitors.

9.            Respondent registered and used the disputed domain name in bad faith.

10.         Respondent’s willingness to sell the disputed domain name supports a finding of bad faith.

11.         Respondent is disrupting Complainant’s business by using the disputed domain name to promote links in competition with Complainant and Respondent generates revenue from these links via click-through fees.

12.         Respondent is deemed to have constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the disputed domain name on June 29, 2007.

13.         Respondent has engaged in typosquatting.

 

B.   Respondent makes the following contentions:

1.    The disputed domain name <lifelocl.com> is not confusingly similar to the LIFELOCK mark.

2.    The latter portion of the disputed domain name, consisting of the term “locl”, is a common abbreviation for “local” and would not commonly be confused for the term “lock.”  

3.    Respondent is in the business of registering generic domain names.

4.    Respondent has parked the disputed domain name with Sedo, which automatically displays advertisements based on past browsing behavior.

5.    Parking is a common practice for companies investing in domain names for future development.

6.    Respondent was not aware that Sedo promoted the sale of the disputed domain name.

7.    Respondent has not engaged in typosquatting as the added term “locl” is an abbreviation for “local,” not a misspelling of “lock.”

 

FINDINGS

Complainant owns multiple registrations for the LIFELOCK trademark and provides its identity theft protection services using its distinctive marks throughout the U.S. and has been recognized and received awards for its services provided under the LIFELOCK mark.

 

Complainant has used its marks in the U.S. since at least as early as May 1, 2005.

 

The lifelock.com domain name was first registered in 2002, and Complainant has continuously maintained the registration for lifelock.com since that time.

 

Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the LIFELOCK mark, Reg. No. 3,232,956, filed April 21, 2006, registered April 24, 2007, and asserting the LIFELOCK mark was first used in interstate commerce at least as early as May 1, 2005.

 

Complainant’s marks were filed and at least one was registered in the U.S well before Respondent registered its domain name on June 29, 2007.

 

Respondent’s disputed domain name, <lifelocl.com> is confusingly similar to Complainant’s mark, because it incorporates Complainant’s distinctive LIFELOCK mark in its entirety but for the omission of the final letter “K”, which has been substituted with the letter “L”, the letter immediately adjacent to “K” on a typical computer keyboard, and adds only a generic top-level domain. This single letter substitution and generic top level domain addition does not distinguish the disputed domain name from Complainant’s LIFELOCK mark but may in fact add to the disputed domain name’s ability to cause confusion and support its confusing similarity to Complainant’s marks.

 

Respondent’s WHOIS information identifies Respondent Adam Viener as registrant of the disputed domain name and Respondent ThunkTunk LLC as the registrant organization.

 

Respondent is not commonly known by Complainant’s mark LIFELOCK, nor is Respondent authorized by Complainant to use any of Complainant’s marks.

 

Respondent is not affiliated with Complainant, nor an authorized employee, vendor, supplier, or distributor of Complainant’s goods or services. 

 

Respondent has no rights or legitimate interests in the disputed domain <lifelocl.com> because it resolves to a website that provides for various searches linking users to websites where the products and services of competitors of Complainant are sold, not to a generic life “local” services page of various service providers unrelated to Complainant’s identity theft services.

 

Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.

 

Respondent used Complainant’s trademarks in its domain name to direct Internet users to websites offering products and services in direct competition with Complainant.

 

Respondent had constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the disputed domain name

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar: Policy ¶ 4(a)(i)

The at-issue domain name is confusingly similar to a mark in which the

Complainant has trademark rights.

 

Complainant uses the LIFELOCK mark for identity theft protection services. Complainant owns the LIFELOCK mark through several U.S. trademark registrations with the United States Patent and Trademark Office ("USPTO"), including Reg. No. 3,232,956, filed April 21, 2006, registered April 24, 2007, and asserting the LIFELOCK mark was first used in interstate commerce at least as early as May 1, 2005. This Panel agrees with prior panels that USTPO registrations sufficiently demonstrate Complainant’s Policy ¶ 4(a)(i) rights in the registered mark, and that such rights date back to the filing date if the registration proves successful. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Accordingly, the Panel finds Complainant has rights in the LIFELOCK mark dating back to April 21, 2006 pursuant to Policy ¶ 4(a)(i).

 

Complainant argues the <lifelocl.com> is confusingly similar to the LIFELOCK mark. Complainant notes the disputed domain name includes Complainant’s registered mark in its entirety, but substitutes a letter “L” for the “K” as the last letter in the LOCK-portion of the mark, and affixes the generic top-level domain (“gTLD”) “.com.” Complainant asserts that such alterations fail to negate confusing similarity. The Panel agrees that the <lifelocl.com> domain name is confusingly similar to the LIFELOCK mark under Policy ¶ 4(a)(i) as the domain name merely substitutes a single letter from the mark, and adds the gTLD “.com,” which substitution and addition fail to distinguish the disputed domain name from the mark. See Homer TLC, Inc. v. D-Max Ltd., FA 1491787 (Nat. Arb. Forum May 14, 2013) (“The Panel finds that the substitution of letters in Respondent’s disputed domain names does not distinguish the domain names from Complainant’s mark under Policy ¶ 4(a)(i).”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The panel further notes this substitution is especially relevant here where the substitution of the final letter “K” is with the letter “L”, the letter immediately adjacent to “K” on the computer keyboard, supporting the potential for typosquatting, discussed below, where a consumer attempting to visit Complainant’s domain name inadvertently strikes the adjacent key, redirecting the consumer to Respondent’s domain name and website located there.

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

Respondent lacks rights and legitimate interests in respect of the at-issue domain

name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, 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.”).

 

In pursuit of its prima facie case, Complainant argues that Respondent is not commonly known by the <lifelocl.com> name. The Panel first notes that the WHOIS record identifies “Adam Viener” as registrant, and “ThunkTunk LLC” as the registrant organization. The Panel also observes that Respondent has failed to offer evidence or even argument that they are commonly known by the disputed domain name. As such, the Panel finds that Complainant has satisfied its Policy ¶ 4(c)(ii) burden, and that the evidence presented is uncontested 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).

 

Complainant also contends in the Complaint that Respondent has not used the disputed domain name in connection with a bona fide offering, or legitimate noncommercial or fair use. Complainant claims Respondent is instead using the disputed domain name to redirect Internet users to Respondent’s website featuring links to third-parties, some of which compete directly with Complainant in the area of identity theft protection. See Compl., at Attached Ex. H. The Panel has reviewed the evidence submitted of Respondent’s website provided in the Complaint Exhibit H and has observed that the disputed domain name resolves to promoted links to “Identity Theft,” “LifeLock Identity Lock,” and “Free Credit Score”, as well as services of other identity theft providers. The Panel agrees, therefore, that the use of a confusingly similar domain name to promote links to third-parties, some competitive with Complainant, does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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); United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds Respondent’s use of the disputed domain name to be neither 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).”).

 

The Panel also notes in response to Respondent’s argument that the content resolving from the <lifelocl.com> domain name is generated by a parking service over which Respondent has no control, that prior panels have consistently attributed the parked content back to the respondent. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). Accordingly, the Panel finds here that Respondent is responsible for the promoted hyperlinks resolving through the <lifelocl.com> domain name, and that the use of a parking service does not mitigate a finding against Respondent with respect to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

Respondent registered and uses the at-issue domain name in bad faith.

 

Complainant argues that Respondent has engaged in bad faith use and registration. Complainant first presents evidence of Respondent’s willingness to sell the disputed domain name in Exhibit H of its Complaint in support of a finding of bad faith. See Compl., at Attached Ex. H.  A respondent’s willingness to sell the disputed domain name may be evidence of bad faith under certain circumstances. To illustrate, the panel in CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), wrote, “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.” Based on the foregoing, and the aforementioned legal responsibility of Respondent registrant for actions occurring at its website, the Panel finds that Respondent’s general offer to sell the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i).

 

Complainant also contends Respondent is disrupting Complainant’s business by using the disputed domain name to promote links to service providers in competition with Complainant. The Panel notes that Complainant’s evidence, namely screen shots of Respondent’s website show that the disputed domain name promotes a link to Complainant, as well as a “related search” link to competitor websites under the heading “Identity Theft.” See Compl., at Attached Ex. H. Complainant provides identify theft services. The Panel agrees with prior panels that have found the use of a disputed domain name to promote links in competition with Complainant amount to Policy ¶ 4(a)(iii) bad faith even where the links are generated by a parking service. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“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).”). The Panel finds that because the promoted links at the disputed domain name website contain the requisite degree of competition pursuant to Policy ¶ 4(b)(iii), the Respondent has engaged in bad faith use and registration.

 

Complainant also argues that Respondent generates revenue from the promoted links via click-through fees, which is a violation of Policy ¶ 4(b)(iv). See Compl., at Attached Ex. H. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “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).” The Panel agrees that Respondent is in violation of Policy ¶ 4(b)(iv), as Respondent is generating revenue from the parked links made available through the disputed domain name.

 

Finally, Complainant contends that Respondent has engaged in typosquatting, which prior panels have found to evince bad faith. As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter “L” for the letter “K” in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <lifelocl.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Scott R. Austin, Panelist

Dated: October 28, 2014

 

 

 

 

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