DECISION

 

RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft

Claim Number: FA1506001625879

 

PARTIES

Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA.  Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <reatilmenot.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 24, 2015; the Forum received payment on June 24, 2015.

 

On June 25, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <reatilmenot.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2015 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@reatilmenot.com.  Also on June 30, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On July 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

Complainant’s Contentions

 

Complainant owns numerous trademark registrations for the RETAILMENOT around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,935,181, first use in commerce Oct. 30, 2006, filed Aug. 27, 2009, registered Mar. 22, 2011).  Complainant also asserts unregistered common law rights in the mark dating back to October 30, 2006.  The mark is used on or in connection with online coupons and advertising services.  The <reatilmenot.com> domain name is confusingly similar to the RETAILMENOT mark because the only way in which the domain name differs from the mark is the transposition of the letter “t” and “a,” as well as the addition of the generic top-level domain (“gTLD”) “.com.”

 

Respondent has no rights or legitimate interests.  Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant.  Further, the domain name is being used to both phish for Internet users personal information and to download malware or other viruses.  Also, Respondent is trying to sell the disputed domain name for a price that exceeds out-of-pocket expenses. 

 

Respondent has engaged in bad faith registration and use.  Respondent is attempting to sell the disputed domain name and has engaged in a pattern of bad faith registrations.  Respondent is also phishing for the personal information of Internet users and attempting to download malware or other viruses.  Lastly, Respondent is typosquatting in bad faith.

 

Respondent’s Contentions

 

Respondent failed to submit a timely response.

 

FINDINGS

1.    Respondent’s <reatilmenot.com> domain name is confusingly similar to Complainant’s RETAILMENOT mark.

2.    Respondent does not have any rights or legitimate interests in the <reatilmenot.com> domain name.

3.    Respondent registered or used the <reatilmenot.com> domain name in bad faith.

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant owns numerous trademark registrations for the RETAILMENOT mark around the world, including with the USPTO (e.g., Reg. No. 3,935,181, first use in commerce Oct. 30, 2006, filed Aug. 27, 2009, registered Mar. 22, 2011).  The mark is used on or in connection with online coupons and advertising services.  The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark according to Policy ¶ 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant also asserts unregistered common law rights in the RETAILMENOT mark dating back to October 30, 2006.  To establish common law rights in a trademark, Complainant must show that the mark has acquired secondary meaning, meaning consumers see the mark and associate it with certain goods or services offered by Complainant.  The Panel notes Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) where the panel found that relevant evidence of secondary meaning included “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”  This Panel notes that Complainant has provided screenshots of its websites containing the RETAILMENOT mark, which date back to 2006.  See Compl., at Attached Ex. 6(c).  Complainant has also provided the Panel with a copy of its Form 10-K, which shows Complainant’s monetary figures related to advertising expenses.  See Compl., at Attached Ex. 6(b).  The Panel is satisfied with the evidence submitted by Complainant, and it awards Complainant common law rights under Policy ¶ 4(a)(i) in the RETAILMENOT mark dating back to October 30, 2006.

 

Complainant argues that the <reatilmenot.com> domain name is confusingly similar to the RETAILMENOT mark.  Complainant notes that the only way in which the domain name differs from the mark is the transposition of the letter “t” and “a,” as well as the addition of the gTLD “.com.”  As a general rule, the gTLD “.com” can never distinguish a domain name from the mark at issue.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  In the past, panels have established a confusing similarity where the only difference between the domain name and mark is the transposition of two letters.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).  Therefore, the Panel finds that the <reatilmenot.com> domain name is confusingly similar to the RETAILMENOT mark according to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 as the <reatilmenot.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the RETAILMENOT mark in domain names.  The Panel notes that “Domain Admin” is listed as the registrant of record for the disputed domain name.  The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights.  Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii).  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 argues that Respondent’s use of the <reatilmenot.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use.  To support this argument, Complainant claims that the domain name is being used in connection with a phishing scheme and/or an attempt to download malware or other viruses.  Upon viewing the resolving webpage, Internet users are prompted to take a survey with the prospect of receiving “an exclusive reward.”  See Compl., at Attached Ex. 9(a).   Complainant has also provided evidence that the resolving webpage displays a message warning Internet users that a virus has been downloaded.  Id.  Prior panels have found that use of a domain name in connection with a phishing scheme and/or an attempt to download malware or other viruses cannot consist of a bona fide offering or a legitimate noncommercial or fair use.  See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).  The Panel accepts either of these arguments, and it declines to grant Respondent rights under Policy ¶¶ 4(c)(i) or (iii), or both.

 

Complainant further argues that Respondent lack of rights and legitimate interests is displayed by the fact that Respondent is trying to sell the domain name for around $11,000.  Complainant has provided the Panel with a screenshot from Go Daddy’s auction site, which shows that the domain name is for sale for at least $11,706.  See Compl., at Attached Ex. 9(b).  In the past, panels have found that a respondent’s willingness to sell the domain name at issue suggests a lack of rights and legitimate interest.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).  The Panel finds that Respondent is trying to sell the disputed domain name, and it declines to award Respondent rights under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent has engaged in bad faith registration and use.  Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for around $11,000.  The Panel again notes that Complainant has provided the Panel with a screenshot from Go Daddy’s auction site, which shows that the domain name is for sale for at least $11,706.  See Compl., at Attached Ex. 9(b).  In the past, panels have found that a respondent’s effort to sell the domain name at issue for excess its out of pocket costs in acquiring the domain name consists of bad faith under Policy ¶ 4(b)(i).  See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).  The Panel finds that Respondent’s offer to sell the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(i).

 

Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations.  Complainant claims that the last identifiable registrant of the disputed domain name was listed as “Alberto Gonzales/Algon Domains.”  The Panel sees in the Complaint that Alberto Gonzales/Algon Domains was the last registrant of the disputed domain name before utilizing a privacy shield. Complainant goes on to cite two UDRP proceedings where that respondent, Alberto Gonzales/Algon Domains, was subjected to a UDRP proceeding.  See John Middleton Co. v. Algon Domains c/o Alberto Gonzalez, FA 1331884 (Nat. Arb. Forum Aug. 9, 2010) (finding bad faith registration and use of blackandmilds.com); see also eDreams, Inc. v. Algon Domains, D2009-1510 (WIPO Dec. 25, 2009) (finding bad faith registration and use of edremas.com).  Prior panels have found bad faith under Policy ¶ 4(b)(ii) where the complainant has shown that the respondent was subjected to prior UDRP proceedings.  See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).  The Panel finds that Respondent in this case is also the respondent from the cases Complainant has cited, and it finds bad faith under Policy ¶ 4(b)(ii).

 

Complainant further argues that Respondent’s bad faith is shown by the fact that Respondent is attempting to obtain the personal information of Internet users by creating a phishing scheme.  The Panel again notes that on the resolving webpage, Internet users are prompted to take a survey with the prospect of receiving “an exclusive reward.”  See Compl., at Attached Ex. 9(a).  Past panels have found bad faith under Policy ¶ 4(a)(iii) where the complainant has been able to show that the respondent is engaged in a phishing scheme.  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).  The Panel finds that Respondent is running a phishing scheme, and it finds bad faith under Policy ¶ 4(a)(iii).

 

Complainant also claims that Respondent has displayed bad faith by attempting to download malware or other viruses on the computers of those who view the resolving webpage.  Again, the Panel notes that Complainant has also provided evidence that the resolving webpage displays a message warning Internet users that a virus has been downloaded.  See Compl., at Attached Ex. 9(a).  In the past, panels have found bad faith under Policy ¶ 4(a)(iii) where the respondent uses the domain name at issue to attempt to download malicious software.  See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).  The Panel finds that Respondent is attempting to download malicious software on to the computers of the Internet users who view the resolving webpage, and it finds bad faith under Policy ¶ 4(a)(iii).

 

Lastly, Complainant argues that Respondent is typosquatting in bad faith.  Complainant notes that the only difference between its RETAILMENOT mark and the <reatilmenot.com> domain name is the transposition of letters “a” and “t.”  Complainant contends that this was done on purpose and with the intent to capitalize on a common misspelling of Complainant’s mark.  Prior panels have found the existence of typosquatting where the respondent registers a domain name that attempts to take advantage of a common misspelling of the mark at issue.  See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent).  Where respondents have engaged in such behavior, prior panels have found bad faith typosquatting under Policy ¶ 4(a)(iii).  See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).  The Panel finds that Respondent is typosquatting, and it finds bad faith under 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 <reatilmenot.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  August 6, 2015

 

 

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