RetailMeNot, Inc. v. Above.com Domain Privacy
Claim Number: FA1701001714474
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <retail-me-not.com>, registered with Above.com Pty Ltd.
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 27, 2017; the Forum received payment on January 27, 2017.
On February 01, 2017, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <retail-me-not.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 February 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@retail-me-not.com. Also on February 1, 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 March 3, 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, RetailMeNot, Inc., is a corporation which offers online coupons and advertising services. Complainant uses the RETAILMENOT mark and <retailmenot.com> website in connection with this business. Complainant has rights to the RETAILMENOT mark based upon numerous registrations with trademark agencies throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,935,181, Registered Mar. 22, 2011, listing the first use in commerce as Oct. 30, 2006). See Compl., at Attached Ex. 8a. Respondent’s <retail-me-not.com> is identical or confusingly similar to Complainant’s RETAILMENOT mark, as the domain name contains the mark in its entirety, merely differing by adding hyphens between the words in the mark and appending the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <retail-me-not.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the REATILMENOT mark for any reason.
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 one of two pages: a page of results from a commercial search engine which includes pay per click links and links to complainant’s competitors, or a “survey site” that offers a prize for completing a survey and providing personally identifying information.
3. Respondent has registered and used <retail-me-not.com> in bad faith. Respondent’s use of the disputed domain name to redirect to a fake survey and a page of links and paid links to competitors is evidence of that bad faith.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <retail-me-not.com> domain name is confusingly similar to Complainant’s RETAILMENOT mark.
2. Respondent does not have any rights or legitimate interests in the <retail-me-not.com> domain name.
3. Respondent registered or used the <retail-me-not.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 REATILMENOT mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,935,181, Registered Mar. 22, 2011, first use in commerce as Oct. 30, 2006). See Compl., at Attached Ex. 8a. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel notes that the creation of the disputed domain name predates the registration date with the USPTO, though Complainant’s first use in commerce as listed on its trademark predates Respondent’s creation of the disputed domain name. The Panel therefore holds that Complainant’s registration of the REATILMENOT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant also relies on common law rights in the mark dating back to the first use of the mark in commerce in 2006. See Compl., at Attached Ex. 6c. Complainant states that it has continuously used the RETAILMENOT mark since that date in affiliation with its website <RetailMeNot.com> and its mobile applications. See Compl., at Attached Exs. 6a–6b. Complainant boasted 140.9 million visitors to its website; 77 million mobile app visits, more than 45 million email subscribers, and more than $50 million in quarterly revenue in 2016. See Compl., at Exs. 6b, 7. The Panel finds Complainant’s contentions to be sufficient, as it concludes that Complainant has established common law rights by showing the RETAILMENOT mark has taken on a secondary meaning in association with Complainant’s business. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Traditionally, a secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant next claims Respondent’s <retail-me-not.com> is identical or confusingly similar to Complainant’s RETAILMENOT mark, as the domain name contains the mark in its entirety, merely differing by adding hyphens between the words in the mark and appending the gTLD “.com.” Addition of hyphens and a gTLD to mark are inconsequential in a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore concludes that the disputed domain name is identical or confusingly similar to the RETAILMENOT mark pursuant to 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 <retail-me-not.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the RETAILMENOT 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 and that the WHOIS information of record identifies Respondent as “Above.com Domain Privacy.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using complainant’s mark supports the 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 <retail-me-not.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, Complainant contends, the disputed domain name redirects to either a page of Yahoo! search results including links to competitors of complainant, or a “survey site” that offers prizes in exchange for personal information. See Compl., at Attached Ex. 9a–9b. Use of a disputed domain name to redirect to either a commercial search engine or a survey site are not uses indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent has registered and used <retail-me-not.com> in bad faith, as evinced by its use of the confusingly similar domain name and resolving website to confuse Internet users and divert them to Respondent for commercial gain. Use of a disputed domain name to link to a commercial search engine with links to a complainants competitors can be evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of 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)). The Panel notes the disputed domain name resolves to a webpage featuring Yahoo! search results, including links to competitors of Complainant. See Compl., at Attached Ex. 9a. The Panel therefore finds Respondent to have acted in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues that Respondent’s bad faith is further evident because the disputed domain name occasionally resolves to a fake survey. Complainant points to a case with a highly similar fact pattern where the panel found bad faith in Respondent’s redirecting Internet users to a fake survey. See RetailMeNot, Inc. v. Above.com Domain Privacy, FA 1641195 (Forum Nov. 3, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) for Respondent’s use of the disputed domain name to operate a fake survey, through which Respondent attempt to gain Internet users’ personal information). One of the sites redirected to is a survey website. See Compl., at Attached Ex. 9b. The Panel therefore finds Respondent to have acted in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <retail-me-not.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: March 21, 2017
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