Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL
Claim Number: FA1602001662361
Complainant is Rocketgate PR LLC (“Complainant”), represented by Arthur R. Petrie, II, California, USA. Respondent is DANIEL CHAVES / ROCKET PAYS INTERNATIONAL (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rocketpays.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2016; the Forum received payment on February 23, 2016.
On February 29, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <rocketpays.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 March 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2016 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@rocketpays.com. Also on March 2, 2016, 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 March 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
Policy ¶ 4(a)(i)
Complainant has rights in the ROCKETPAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,887,756, registered January 19, 2016). Respondent’s <rocketpays.com> domain name is confusingly similar to the ROCKETPAY mark because it wholly incorporates the mark and merely adds the letter “s” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent fails to use the <rocketpays.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive holding.
Policy ¶ 4(a)(iii)
Respondent uses the <rocketpays.com> domain name in bad faith because the resolving website constitutes an inactive holding. Respondent’s registration of the <rocketpays.com> domain name constitutes opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of the provision of online payment services.
2. Complainant has rights in the ROCKETPAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,887,756, registered January 19, 2016).
3. Complainant has also established common law trademark rights in ROCKETPAY from or about October 1, 2014.
4. The <rocketpays.com> domain name was registered on October 9, 2014.
5. The disputed domain name does not resolve to an active website.
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(f), 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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims to have rights in the ROCKETPAY mark through its registration with the USPTO (Reg. No. 4,887,756, registered January 19, 2016). Complainant has provided evidence of this registration in its Annex 1. As such, the Panel finds that Complainant has rights in the ROCKETPAY mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark). It appears from the evidence that the trademark was first used in commerce on October 1, 2014. It also appears from the history of Complainant as shown on www.archive.org that Complainant was a going concern prior to that date. The Panel therefore finds on the balance of probabilities that Complainant had common law trademark rights in ROCKETPAY for the online payment services it provided at least from October1, 2014.
The second issue that arises is whether the disputed <rocketpays.com> domain name is identical or confusingly similar to Complainant’s ROCKETPAY mark Complainant contends that Respondent’s <rocketpays.com> domain name is confusingly similar to the ROCKETPAY mark because it wholly incorporates the mark. The Panel notes that the domain name differs from the mark in that it contains the additional letter “s” and the gTLD “.com.” Many panels have held that neither such a minor spelling alteration or the addition of the gTLD “.com” suffix can negate a finding of confusing similarity which is otherwise present as it is in this case. Accordingly, the Panel finds that Respondent’s <rocketpays.com> domain name is confusingly similar to the ROCKETPAY mark. 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)); see also 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.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ROCKETPAY mark and to use it in its domain name and has added the letter “s” which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on October 9, 2014, only a few days after Complainant applied for its trademark and after Complainant first used the expression ROCKETPAY in commerce;
(c) The domain name does not resolve to an active website;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant does not articulate an argument suggesting that Respondent is not commonly known by the <rocketpays.com> domain name. However, the Panel notes that the available WHOIS information lists “Daniel Chaves” as Registrant. As the Panel finds the record void of any additional evidence on this issue, it finds that Respondent is not commonly known by the <rocketpays.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f) Complainant submits that Respondent fails to use the <rocketpays.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive holding. The Panel notes, however, that Complainant has not provided evidence of this allegation. As the Panel finds the allegation sufficient and more likely to be correct than not, it finds that Respondent has failed to use the <rocketpays.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant does not make any arguments regarding Respondent’s bad faith which are specifically enumerated under Policy ¶ 4(b). However, the Panel notes that the Policy is not an exclusive list of bad faith criteria, but, instead, an illustrative list. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant alleges that Respondent uses the <rocketpays.com> domain name in bad faith because the resolving website constitutes an inactive holding. Complainant asserts that the domain name is “not in use for business or any other purpose.” The Panel notes that Complainant has not provided evidence of this allegation. But as the Panel finds the allegation sufficient and more likely to be correct than not, it finds that Respondent uses the <rocketpays.com> domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Secondly, Complainant argues that Respondent’s registration of the <rocketpays.com> domain name constitutes opportunistic bad faith. Complainant claims that it began using the ROCKETPAY mark on October 1, 2014 and that Respondent registered the domain name on October 9, 2014. The Panel notes that Complainant has not provided any evidence to suggest use of the ROCKETPAY mark prior to the filing date with the USPTO, October 27, 2014. Nevertheless, the Panel finds there is some strength in this submission as it can scarcely be a coincidence that Complainant began using the ROCKETPAY mark on October 1, 2014 and Respondent registered the domain name on October 9, 2014. It appears therefore that Complainant’s common law trademark was on foot before Respondent registered the domain name, albeit only a few days before the registration. Accordingly, although parties and their advisers are reminded that they should adduce evidence of all allegations made, the Panel finds Complainant’s allegation sufficient and, consequently, that Respondent’s registration of the <rocketpays.com> domain name constitutes opportunistic bad faith. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <rocketpays.com>, domain name using the ROCKETPAY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rocketpays.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: April 6, 2016
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