The NPD Group, Inc. v. PALASH BHARADWAJ
Claim Number: FA1606001680663
Complainant is The NPD Group, Inc. (“Complainant”), represented by Mark N. Mutterperl of Zeisler PLLC, New York, USA. Respondent is PALASH BHARADWAJ (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <receiptpalwallet.com>, registered with FastDomain 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 23, 2016.
On June 23, 2016, FastDomain Inc. confirmed by e-mail to the Forum that the <receiptpalwallet.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 June 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@receiptpalwallet.com. Also on June 24, 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.
A timely Response was received and determined to be complete on July 12, 2016.
On July 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant operates a business that provides downloadable software for mobile devices for use by consumers in the uploading of sales and product information. Complainant has engaged in the provision of these services under the RECEIPTPAL mark since at least November 21, 2013.
- Complainant owns a valid registration with the United States Patent and Trademark Office ("USPTO") for the RECEIPTPAL service mark.
- The disputed domain name, <receiptpalwallet.com>, is confusingly similar to the Complainant's RECEIPTPAL mark. The addition of the generic term, "wallet," is immaterial in distinguishing the mark from the name, which encompasses the full arbitrary term, "receiptpal."
- Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use Complainant's mark for any purpose. There is no evidence that Respondent is commonly known as the disputed domain name. Respondent is using the disputed domain name to redirect internet users to Respondent's own website, which offers services that compete directly with Complainant's services. At one point, Respondent changed his website title to "RPW," but that does not legitimize his continued use of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. Respondent has run afoul of Policy ¶¶ 4(b)(iii) and 4(b)(iv), because Respondent is using the disputed domain name to disrupt Complainant's business and to gain commercially through the likelihood of confusion between the name and Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website.
B. Respondent
- Complainant has shown no evidence that it operates under the RECEIPTPAL mark as its website is found at the domain name, <receiptpalapp.com>.
- Respondent has a legitimate interest in operating its services under the disputed domain name, since Respondent is simply making use of the common term, "receipt," with respect to that name. Respondent is using the disputed domain name to provide his no-cost services to internet users. Moreover, Respondent agreed to use, as the name of his services, "RPW" instead of either "ReceiptPal Wallet" or "ReceiptpalWallet."
- Respondent did not register and is not using the disputed domain name in bad faith, as Respondent also registered the domain name <receiptpal.com> on July 25, 2009, which predates Complainant's adoption of its mark by more than four years.
- Complainant is engaged in an attempt at reverse domain name hijacking in connection with the disputed domain name. Complainant plans to obtain the disputed domain name through this proceeding as a prelude to seizing Respondent's domain name, <receiptpal.com>, in a subsequent Policy proceeding.
Complainant is a United States company that operates a mobile device application service which allows customers to upload sales and product information. Complainant has been in business since November 2013 and has registered its RECEIPTPAL service mark with the USPTO (Reg. No. 4,650,240; registered Dec. 2, 2014).
The disputed domain name, <receiptpalwallet.com>, is owned by Respondent, who registered the name on Dec. 5, 2014. Respondent uses the name to redirect internet users to his website, where services that compete with Complainant's services are offered. Respondent also owns the domain name, <receiptpal.com>, which was registered on July 25, 2009.
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.
Through registration of its service mark RECEIPTPAL with the USPTO, Complainant has provided sufficient evidence to convince the Panel that Complainant has the threshold rights in the mark required by Policy ¶ 4(a)(i). See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) ("Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO."); see also The Schneider Group, Inc. v. Jack Mann, D2010-0448 (WIPO May 5, 2010) ("...Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO...").
The Panel can see plainly that the disputed domain name, <receiptpalwallet.com>, is not identical to the Complainant's RECEIPTPAL mark. However, the Panel believes the difference between the two to be incidental. The addition of the generic, common word, "wallet," does not offer sufficient distinction between the disputed domain name and the mark to avoid a finding of confusing similarity. The Panel finds the additional term to be clearly subordinate and merely complementary to the dominant term in the name, "receiptpal," which is identical to Complainant's mark. Also, the inclusion of the gTLD, ".com," is of no moment in this analysis. See Mastercard Intern'l Inc. v. Erik Schieffer, D2012-0459 (WIPO May 8, 2012) (finding the disputed domain name, <paypasswallet.com>, to be confusingly similar to the mark, PAYPASS); see also Yahoo! Inc. v. Richard Dank, FA 203169 (Forum Dec. 6, 2003) (finding <yahoo-wallet.com> to be confusingly similar to the YAHOO! mark); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“...Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain ('gTLD') is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.").
Consistent with the foregoing, the Panel finds that Complainant has satisfied the first element required under the Policy.
The Panel has found the disputed domain name to be confusingly similar to Complainant's mark, and Complainant denies ever having authorized Respondent to make use of that mark. Consequently, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The onus is thus placed upon Respondent to supply evidence to the Panel that would rebut that case. See AOL LLC v. Gerberg, FA 780200 (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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
In his Response, Respondent does not contend clearly that he, or any business that he may own, is commonly known as the disputed domain name. Also, though he alludes to services provided at no cost, Respondent fails to assert directly that he is using the disputed domain name in a legitimate noncommercial or fair use manner. On the other hand, Complainant contends that Respondent is using the disputed domain name to host a website that offers services that mirror the services provided by Complainant. Such use, Complainant argues, should not be considered a bona fide offering of goods or services, because that use treads upon Complainant's service mark rights.
All of the foregoing contentions, or lack thereof, revolve around the Policy ¶ 4(c) criteria that might be used by a respondent to justify its ownership of a disputed domain name. However, it is clear under the Policy that ¶ 4(c) is not the only avenue by which a respondent might establish its rights or legitimate interests in a disputed domain name. Most pertinently in this case, in the Panel's view, Respondent contends, with compelling evidence, that he is also the owner of the domain name <receiptpal.com>. It occurs to the Panel that the disputed domain name, <receiptpalwallet.com>, is merely subordinate and complementary to the former domain name—much as the disputed domain name was found in the prior section to contain an additional term that was considered to be subordinate and complementary to the term comprising Complainant's RECEIPTPAL mark. As such, the Panel believes that Respondent would surely have both rights and legitimate interests in the disputed domain name, as it is clearly a simple modification of a domain name to which Respondent's rights have not been challenged.
Accordingly, the Panel finds that Complainant has failed to satisfy the second element required under the Policy.
Although Complainant has failed to satisfy the second element required under the Policy and the Panel need not address the third such element, the Panel will briefly analyze this element as well.
Since Respondent registered the domain name, <receiptpal.com>, on July 25, 2009—more than four years before Complainant came into existence—the Panel believes that there could be no possibility of finding that Respondent's registration of the disputed domain name, <receiptpalwallet.com>, a companion registration to the former registration, was done in bad faith.
Reverse Domain Name Hijacking
Respondent speculates that the reason Complainant submitted this Policy filing concerning the disputed domain name, <receiptpalwallet.com>, is to obtain ultimately Respondent's other relevant -- and actually more desirable to Complainant -- domain name, <receiptpal.com>. Consistent with that speculation, the Panel does believe that Complainant, and its learned counsel, are well aware that the latter domain name would not be obtainable through a straight forward Policy proceeding because of that domain name's registration date.
Also, it would strain credulity to believe that Complainant and its counsel were unaware that Respondent owned <receiptpal.com>, which is identical to Complainant's RECEIPTPAL mark. Complainant and its counsel failed to mention the fact of such ownership in the Complaint, along with failing to note that Complainant operated through the domain name <receiptpalapp.com>. The Panel suspects that Complainant and its counsel may have thought that they might prevail in a Policy proceeding regarding the disputed domain name, if, as in many UDRP cases, there was no Response. In that circumstance, there would have been no recognition of Respondent's valid ownership of the <receiptpal.com> domain name (an unsuspecting panelist might have even reasonably assumed that Complainant owned said name); and adverse conclusions, which such ownership would likely generate in a Policy proceeding, might have been avoided.
However, the Panel does not believe that a finding of reverse domain name hijacking should be based upon speculation and suspicion. Complainant did satisfy the first element of the Policy in connection with the disputed domain name, and made credible, if not persuasive, contentions with respect to the second element. As a result, the Panel declines to charge Complainant with reverse domain name hijacking in this case.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <receiptpalwallet.com> domain name or REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: August 1, 2016
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