Paperless Inc. v. ICS Inc
Claim Number: FA1507001629515
Complainant is Paperless Inc. (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, London, United Kingdom. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paperlessspost.com>, registered with Tucows Domains 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2015; the Forum received payment on July 20, 2015.
On July 20, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <paperlessspost.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 July 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@paperlessspost.com. Also on July 20, 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 August 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant provides online and printed stationery, including greetings, invitations, birth announcements, wedding sites, and custom stationery. Complainant owns the PAPERLESS POST mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,730,236, registered Dec. 22, 2009). The <paperlessspost.com> domain name is confusingly similar to Complainant’s PAPERLESS POST mark. The <paperlessspost.com> domain name removes the space between “paperless” and “post,” inserts an additional “s,” and includes the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent has been commonly known by the disputed domain name, and Complainant has never authorized or licensed Respondent to use its trademark. Further, Respondent lacks rights or legitimate interests in the <paperlessspost.com> domain name, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name features affiliate and sponsored links and advertising for Respondent’s commercial purposes.
Respondent has engaged in bad faith registration and use of the <paperlessspost.com> domain name. Respondent has listed the disputed domain name for sale, which constitutes evidence of bad faith. Additionally, Respondent is a well-known serial cybersquatter and has over 100 prior UDRP cases decided against it. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <paperlessspost.com> domain name.
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 argues that the <paperlessspost.com> domain name is confusingly similar to Complainant’s PAPERLESS POST mark. The <paperlessspost.com> domain name removes the space between “paperless” and “post,” inserts an additional “s,” and includes the gTLD “.com.” In the past, panelists have viewed the removal of spaces and the addition of gTLDs as irrelevant to Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Additionally, past panels have concluded that the addition of a single character is not sufficient to differentiate a domain name from a mark under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <paperlessspost.com> domain name is confusingly similar to the PAPERLESS POST pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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 claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that there is no evidence that Respondent has been commonly known by the disputed domain name, and Complainant has never authorized or licensed Respondent to use its trademark. The WHOIS information for the disputed domain name lists “ICS Inc” as the registrant of record. Respondent has not contested Complainant’s allegations. The Panel finds that the available evidence is sufficient to establish Respondent’s lack of rights in the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent lacks rights or legitimate interests in the <paperlessspost.com> domain name, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent’s disputed domain name features affiliate and sponsored links and advertising for Respondent’s commercial purposes. Some of the featured hyperlinks include “Photo Christmas Cards” and “Printable Invitations.” Past panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. 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). Accordingly, the Panel finds that Respondent’s use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant alleges that Respondent has listed the disputed domain name for sale, which constitutes evidence of bad faith. According to Complainant, Respondent has posted the <paperlessspost.com> domain name for sale on its resolving website. Past panels have found that respondents exhibit bad faith behavior when they make a general offer to sell a disputed domain name. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(i).
Complainant asserts that Respondent is a serial cybersquatter and has over 100 prior UDRP cases decided against it. Complainant has provided evidence of Respondent’s prior UDRP cases held against it in Complainant’s exhibits. See Bank of the Sierra, a California corporation v. ICS Inc, FA 1589330 (Nat. Arb. Forum Dec. 18, 2014); Bloomberg L.P. v. ICS Inc, FA 1582864 (Nat. Arb. Forum Nov. 14, 2014). Panels have agreed that multiple prior UDRP decisions that result in a finding of bad faith or transfer are sufficient evidence to establish a respondent’s bad faith registration and use. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Accordingly, the Panel finds that Respondent’s pattern of bad faith registrations demonstrates bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant claims that, for commercial gain, Respondent intentionally attracts Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably seeks a profit through the use of its disputed domain names, and registered the disputed domain names to attract and mislead consumers for its own commercial purposes. Past panels have found that hyperlinks are typically associated with monetary compensation, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel therefore finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <paperlessspost.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 17, 2015
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