RetailMeNot, Inc. v. VK V / VKV
Claim Number: FA1612001708508
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is VK V / VKV (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <retailmenotcanada.com>, registered with Domain.com, LLC.
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.
Anne M. Wallace, QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2016; the Forum received payment on December 19, 2016.
On December 20, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <retailmenotcanada.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@retailmenotcanada.com. Also on December 21, 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 January 17, 2017.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on January 23, 2017.
On January 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends:
B. Respondent
Respondent contends:
· Respondent does not use <retailmenotcanada.com> for commercial purposes. Respondent is a generic domain name reseller with a portfolio of thousands of domain names. The domain name is meant as a review site to express opinions on Complainant’s company with respect to their “Canadiana.”
· The domain name was purchased in good faith to exercise First Amendment rights and educate consumers.
C. Complainant’s Additional Submissions
Complainant asserts:
D. Respondent’s Additional Submissions
Respondent asserts:
· Respondent does not admit the disputed domain name redirects to <canadiandealsandcoupons.com>, only that it used to redirect to that site.
· Respondent only intended to provide links to other blogs that discussed couponing and saving money. What those sites published was not in Respondent’s control. Respondent has removed the website.
· The disputed domain name only provided links to savings websites.
· The disputed domain name was used for a test website and Respondent did not obtain any funds from the site. The site was not finished and it was not intended to be used for commercial purposes.
The Panel finds:
· Complainant has established rights in the RETAILMENOT mark.
· The disputed domain name is confusingly similar to Complainant’s RETAILMENOT mark.
· Respondent has not established any rights or legitimate interests in the disputed domain name.
· Respondent registered and used the disputed domain name in bad faith.
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.
Complainant has established it holds several trademark registrations for the RETAILMENOT mark in connection with its online advertising and couponing services. Complainant holds registrations with the USPTO (e.g., Reg. No. 3,935,181, registered Mar. 22, 2011) and CIPO (Reg. No. 812,477, registered Nov. 23, 2011). The Panel accepts these CIPO and USPTO registrations as sufficient to establish Complainant`s rights in the mark:
See Disney Enterprises, Inc. v. Rejean Leduc, FA 1607622 (FORUM May 5, 2015) (finding Complainant’s USPTO and CIPO registrations are sufficient to establish Complaint’s rights in the DISNEY mark under Policy ¶ 4(a)(i)).
The Panel also finds Respondent’s <retailmenotcanada.com> is confusingly similar to the RETAILMENOT mark under Policy ¶ 4(a)(i) because the mark is included in its entirety, with only the geographically descriptive term “Canada” and the “.com” gTLD added. These additions do not distinguish the domain name from the mark:
See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark).
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. The burden then shifts to Respondent to show it does have rights or legitimate interests.
See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 points out that there is no evidence Respondent is commonly known by <retailmenotcanada.com>, nor has Complainant authorized Respondent’s registration of its mark in a domain name or other medium. Here, the WHOIS lists “VK V / VKV” as registrant of record. There is nothing in the WHOIS information to suggest Respondent is commonly known by the disputed domain name.
See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (FORUM Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”).
Complainant has therefore met the initial burden to show Respondent does not have rights or interests in the disputed domain name. Respondent says it is a generic domain reseller and has submitted no information to show it is commonly known by <retailmenotcanada.com> or that Complainant authorized used of its mark in the disputed domain name or otherwise. On the information before us, the Panel is satisfied Respondent is not commonly known by the disputed domain name.
Complainant`s materials suggests Respondent misleads Internet users by redirecting them to a competitive service, which does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use. Redirection of Internet users generally is not sufficient to establish rights and legitimate interests.
See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (FORUM Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel agrees Respondent’s redirection to third parties fails to evince any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Furthermore, Respondent has not provided any compelling evidence to establish the claimed non-commercial use of the disputed domain name. Respondent does not have rights of legitimate interests in the disputed domain name.
Complainant argues Respondent uses <retailmenotcanada.com> to provide directly competitive services, and that bad faith registration and use has been demonstrated pursuant to Policy ¶¶ 4(b)(iii) and (iv). Complainant`s material shows Respondent uses the disputed domain name to redirect Internet users to competing websites. Redirecting to a complainant’s competitors is an action that has resulted in findings of bad faith under both Policy ¶¶ 4(b)(iii) and (iv).
See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (FORUM Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (FORUM Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant also argues that the domain name itself is a copy of a third-party competitor’s website, adding to the impression of Respondent’s bad faith.
The Panel finds Respondent has registered and used <retailmenotcanada.com> in bad faith according to Policy ¶¶ 4(b)(iii) and (iv). Respondent did not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use. On the contrary, Respondent used the disputed domain name to display links to sites of Complainant`s competitors. This is obvious bad faith registration and use. Respondent has put nothing before the Panel other than a bald assertion that the web site was to be used for a blog to comment on Complainant`s business or that Respondent holds other domain names to operate websites for that purpose. The Panel does not accept Respondent`s assertion in that regard. Complainant has established bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <retailmenotcanada.com> domain name BE TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Anne M. Wallace QC, Panelist
Dated: February 7, 2017
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