T-Mobile USA, Inc. dba MetroPCS v. Balticsea LLC
Claim Number: FA1701001712869
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropcsrebate.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2017; the Forum received payment on January 17, 2017.
On January 17, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <metropcsrebate.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 January 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 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@metropcsrebate.com. Also on January 18, 2017, 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 February 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a national provider of mobile communications services with a network reaching more than 300 million people throughout the United States. Complainant owns the METROPCS mark through its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,865,446, registered July 20, 2004).
2. The <metropcsrebate.com> domain name[1] is confusingly similar to Complainant’s METROPCS mark, as Respondent has simply added the generic term “rebate” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent lacks rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name as evidenced by the available WHOIS information.
4. Further, Respondent is neither licensed nor authorized by Complainant to use the METROPCS mark. Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
5. Rather, Respondent uses the <metropcsrebate.com> domain name as a pay per click page linking to third-party websites or a fake Microsoft-branded support page, which warns Internet users that their computer may be infected with a virus.
6. Respondent has registered and is using the domain name in bad faith. First, Respondent is offering the domain name up for sale. Next, Respondent uses the domain name as a pay per click website, through which Respondent presumably profits. Further, through redirection via the pay per click hyperlinks, Respondent redirects Internet users to websites through which virus warnings pop up. Finally, Respondent registered the domain name with actual knowledge of Complainant and its rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the METROPCS mark. Respondent’s domain name is confusingly similar to Complainant’s METROPCS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <metropcsrebate.com> domain name and that Respondent registered and uses the 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.
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 (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 is a national provider of mobile communications services with a network reaching more than 300 million people throughout the United States. Complainant owns the METROPCS mark through its numerous trademark registrations with the USPTO (e.g., Reg. No. 2,865,446, registered July 20, 2004). Ownership of a trademark with the USPTO is evidence of a complainant’s rights in the mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) . . . .”).
Complainant argues that the <metropcsrebate.com> domain name is confusingly similar to Complainant’s METROPCS mark, as Respondent has simply attached the generic term “rebate” and the gTLD “.com.” Such changes are insignificant changes according to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel holds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <metropcsrebate.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights or legitimate interests in the <metropcsrebate.com> domain name. First, Complainant contends Respondent is not commonly known by the domain name. This record supports Complainant’s contention that Respondent is neither licensed nor authorized to use Complainant’s METROPCS mark. “Balticsea LLC” is listed as registrant of the <metropcsrebate.com> domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <metropcsrebate.com> domain name under Policy ¶ 4(c)(ii). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Complainant contends that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <metropcsrebate.com> domain name. Rather, Respondent uses the <metropcsrebate.com> domain name to redirect Internet users, via pay per click hyperlinks, to unrelated websites or to a website that states that the user’s computer may be infected by a virus. Neither use is consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (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)”).
Additionally, Complainant has shown that Respondent has offered the disputed domain name for sale. This has been found to indicate a lack of rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Thus, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has offered evidence that Respondent is using the <metropcsrebate.com> domain name to offer pay per click hyperlinks that redirect Internet users to unrelated websites. It is reasonable to conclude Respondent profits through the use of the hyperlinks. This amounts to bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Consequently, the Panel finds that the Respondent registered and uses the <metropcsrebate.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant has produced evidence that Respondent also uses the <metropcsrebate.com> domain name to distribute malware. Such behavior demonstrates additional evidence of bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant and its rights in the METROPCS mark when registering the disputed domain name. Because the <metropcsrebate.com> domain incorporates Complaint’s mark entirely with a generic term, it is reasonable for the Panel to infer Respondent did have actual knowledge of Complainant and its rights in the METROPCS mark when registering the domain name, and therefore Respondent acted in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropcsrebate.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 23, 2017
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