RF Technologies, Inc. v Rankin, Mark
Claim Number: FA1705001732003
Complainant is RF Technologies, Inc. (“Complainant”), represented by Jane C. Schlicht of Hinshaw & Culbertson LLP, Wisconsin, USA. Respondent is Rankin, Mark (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pinpointinitiative.com> and <pinpointi.com>, registered with Network Solutions, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2017; the Forum received payment on May 17, 2017.
On May 17, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <pinpointinitiative.com> and <pinpointi.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@pinpointinitiative.com, postmaster@pinpointi.com. Also on May 22, 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 June 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, a manufacturer and seller of personal security systems, registered its PINPOINT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,924,622, registered Feb. 8, 2005), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <pinpointinitiative.com>, domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive word “initiative” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark. Respondent’s <pinpointi.com> is identical or confusingly similar to Complainant’s mark because it merely appends the letter “I” and the gTLD “.com”.
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its PINPOINT mark in any fashion and Respondent is not commonly known by the disputed domain name. Respondent also does not use the disputed domain names for any bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Respondent only uses the disputed domain names to profit from the Internet traffic to its webpages, capitalizing on the customer recognition of Complainant’s marks. While on the resolving webpages for the disputed domain names, Respondent purports to offer services in direct competition with those of Complainant.
Respondent has registered and is using the disputed domain names in bad faith. Respondent attempts to disrupt the business of Complainant —under Policy ¶ 4(b)(iii)—by offering competing services. Respondent also attempts to attract Internet traffic and commercially benefit from the goodwill of the PINPOINT mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Finally, Respondent must have had actual knowledge of Complainant’s rights in the PINPOINT mark because of Complainant’s long and continuous use of the mark, the national distribution of products, and its sales through its website, tradeshows, and publications.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is RF Technologies, Inc. of Brookfield, WI, USA. Complainant owns the domestic registration for the mark PINPOINT, which Complainant and its predecessors have used continuously since at least as early as 1999, in connection with its provision of emergency management and asset tracking systems in the hospitality, healthcare, and education industries.
Respondent is Mark Rankin of Lakeway, TX, USA. Respondent’s registrar’s address is listed as Jacksonville, FL, USA. The Panel notes the following listed dates of registration:
<pinpointinitiative.com>…………………………………………………June 24, 2015
<pinpointi.com>………………………………………………..………..August 4, 2015
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 contends it registered its PINPOINT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,924,622, registered Feb. 8, 2005), and has rights in the mark under Policy ¶ 4(a)(i). A USPTO registration sufficiently confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). The Panel here finds that Complainant has established rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <pinpointinitiative.com> domain name is confusingly similar to Complainant’s mark because it merely appends the descriptive word “initiative” and the gTLD “.com” to the fully incorporated mark. Respondent’s <pinpointi.com> is also identical or confusingly similar to Complainant’s mark because it merely appends the letter “I” and the gTLD “.com”. The appendage of a gTLD is irrelevant when analyzing the confusing similarity of a domain name. See NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum Mar. 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”). Further, the misspelling of or addition of a letter to a mark is not sufficient to distinguish a confusingly similar domain name. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Similarly, the addition of descriptive terms to a mark fails to sufficiently distinguish a domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel here finds that the <pinpointinitiative.com> and <pinpointi.com> domain names are confusingly similar to Complainant’s PINPOINT mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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). Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its PINPOINT mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel here notes that the disputed domain names’ WHOIS information lists “MARK RANKIN” as the registrant, and there is nothing provided by Respondent to contradict Complainant’s assertions. The Panel here finds that Respondent is not commonly known by the disputed domain names.
Complainant further argues that Respondent has not made any bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain names because Respondent uses Complainant’s entire mark to divert Internet users seeking Complainant’s site to Respondent’s sites, which offer competing services, for commercial benefit. Such use cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Here, Complainant fully incorporates Complainant’s mark in the domain name and offers competing services. The Panel here finds that the evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent is disrupting its business by attempting to divert potential customers away from Complainant and offering information that directly competes with Complainant. Using a confusingly similar domain name to offer products or services that directly compete with a complainant can evince bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant provided a screenshot of both disputed domain names’ resolving websites. The <pinpointinitiative.com> domain name appears to resolve to a website offering location technology services, while the <pinpointi.com> domain name appears to resolve to a login page for a “Pinpoint Initiative”. The Panel here finds that Respondent has used the disputed domains in bad faith under Policy ¶ 4(b)(iii).
Complainant additionally argues that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the PINPOINT mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein can constitute bad faith under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Here, Complainant has provided screenshots of Respondent’s websites, which prominently display the PINPOINT mark in correlation with services similar to Complainant’s. The Panel here finds that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the<pinpointinitiative.com> and <pinpointi.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 30, 2017
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