T-Mobile USA, Inc. dba MetroPCS v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1701001713329
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropcsaccount.com>, registered with Internet Domain Service BS Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2017; the Forum received payment on January 19, 2017.
On January 25, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <metropcsaccount.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@metropcsaccount.com. Also on January 27, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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, T-Mobile USA, Inc. dba MetroPCS, is a national provider of mobile communications services. In connection with this business, Complainant has used the METROPCS mark to brand wireless devices and communication services since at least 2002. Complainant has rights in the METROPCS mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Re. No. 2,792,316, registered Dec 9, 2003). See Compl., at Attached Ex. C. Respondent’s <metropcsaccount.com> is confusingly similar to Complainant’s mark, as it contains the mark in its entirety, merely adding the descriptive term “account” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <metropcsaccount.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed Respondent to use the METROPCS mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to various websites, including a pay-per-click site that promotes Complainant’s competitors and Complainant’s own website. Respondent also offers to sell the disputed domain name, further demonstrating its lack of rights and legitimate interests.
3. Respondent has registered and used <metropcsaccount.com> in bad faith. Respondent’s offer to sell the disputed domain name is evidence of its bad faith. Also, Respondent’s use of the disputed domain name amounts to an attempt to divert and attract Internet users for commercial gain. Further, Respondent clearly had actual knowledge of Complainant and Complainant’s rights in the METROPCS mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <metropcsaccount.com> domain name is confusingly similar to Complainant’s METROPCS mark.
2. Respondent does not have any rights or legitimate interests in the <metropcsaccount.com> domain name.
3. Respondent registered or used the <metropcsaccount.com> 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 claims rights in the METROPCS mark based upon registration of the mark with the USPTO (e.g. Re. No. 2,792,316, registered Dec 9, 2003). See Compl., at Attached Ex. C. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel therefore holds that Complainant’s registration of the METROPCS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <metropcsaccount.com> is confusingly similar to Complainant’s METROPCS mark, as the domain name contains the mark in its entirety, merely differing through the addition of the descriptive term “account” and the gTLD “.com.” Adding a descriptive term and a gTLD to a mark in order to form a domain name does not distinguish the domain name in an analysis for confusing similarity under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Accordingly, the Panel finds the disputed domain name to be confusingly similar to the METROPCS mark per Policy ¶ 4(a)(i).
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 (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 argues that Respondent has no rights or legitimate interests in <metropcsaccount.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the METROPCS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent. See Compl., at Attached Ex. A (listing “Domain Admin” at “Whois Privacy Corp.” as registrant name). Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a
complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <metropcsaccount.com> is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name redirects Internet users to either a pay-per-click website that promotes Complainant’s competitors and offers to sell the domain, or to Complainant’s own website. See Compl., at Attached Exs. F and G. Respondent has previously redirected Internet users to competing wireless equipment and service providers. See Compl., at Attached Ex. H. Use of a disputed domain name to redirect or link to a complainant’s competitors is not a use indicative of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel therefore finds that Respondent does not demonstrate rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
Also, Complainant contends that Respondent’s offer for sale of <metropcsaccount.com> is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. See Compl., at Attached Ex. F. Offers to sell a domain name can be evidence of a respondent’s lack of rights and legitimate interests in the domain name per 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).”). The Panel agrees and hold that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ (a)(ii).
Complainant contends Respondent demonstrates bad faith by offering to sell <metropcsaccount.com> for an excess of out-of-pocket costs. Offers to sell a domain name for more than the initial price of registration can be evidence of bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel recalls that one of the resolving webpages for the disputed domain name offers the domain name for sale for a sum of $4,750. See Compl., at Attached Ex. F. The Panel therefore finds Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also contends that Respondent’s registration and use of <metropcsaccount.com> amount to an attempt to redirect Internet users to Complainant’s competitors, either directly or through a pay-per-click link page demonstrates Respondent’s bad faith. Use of a disputed domain name to redirect or link to a complainant’s competitors can be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 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)). The Panel recalls that the disputed domain name redirects to a variety of websites, including a parked page containing links to direct competitors of Complainant, and even directly to the competitors’ websites. See Compl., at Attached Exs. F–H. The Panel therefore finds Respondent to have acted in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant's rights in the METROPCS mark. Complainant argues that Respondent's inclusion of the mark in <metropcsaccount.com>, along with the word “account,” which refers to Complainant’s account management services indicates that Respondent had actual knowledge of Complainant's mark and rights. Additionally, Respondent’s use of the disputed domain name to redirect, at various times, to competitors of Complainant and even to Complainant’s own website reinforces this assertion. See Compl., at Attached Ex. G and H. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropcsaccount.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 9, 2017
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