Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. v. HEMANG INFRASRUCTURE PRIVATE LIMITED
Claim Number: FA1707001739618
Complainant is Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is HEMANG INFRASRUCTURE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carolwrightcatalog.com>, registered with Tirupati Domains and Hosting Pvt Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2017; the Forum received payment on July 12, 2017.
On Jul 15, 2017, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the Forum that the <carolwrightcatalog.com> domain name is registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt 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 July 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@carolwrightcatalog.com. Also on July 21, 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 August 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is a direct-mail catalog and online retailer specializing in a wide variety of health products aimed at seniors, along with clothing, collectibles, exercise equipment, home furnishings, housewares, and shoes.
Complainant registered the CAROL WRIGHT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,571,260, registered Dec. 12, 1989). Respondent’s <carolwrightcatalog.com> domain name is identical or confusingly similar to Complainant’s mark as it merely appends the generic term “catalog” along with the generic top-level domain (“gTLD”) “.com” to Complainant’s entire mark.
Respondent has no rights or legitimate interests in the <carolwrightcatalog.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users seeking Complainant to a third-party website containing generic links to third-party website, some of which directly compete with Complainant’s business. Respondent presumably does so to receive pay-per-click fees from these linked websites.
Respondent registered and uses the <carolwrightcatalog.com> domain name in bad faith. Respondent uses the disputed domain name to take advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain from pay-per-click fees associated with the competing third-party links displayed on the resolving webpage. This use of the disputed domain name disrupts Complainant’s business by diverting potential consumers away from Complainant’s business to Respondent’s website. Further, Respondent has engaged in an ongoing pattern of such behavior, and has multiple prior adverse UDRP decisions against it.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a trademark registration for CAROL WRIGHT.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the CAROL WRIGHT mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent has been subject to multiple adverse UDRP decisions.
Respondent uses the at-issue domain name to address a website offering pay-per-click links which relate to third parties some of which compete with Complainant.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for the CAROL WRIGHT trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(I). 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.).
Respondent’s <carolwrightcatalog.com> domain name contains Complainant’s CAROL WRIGHT mark, less its space, suffixed with the suggestive term “catalog.” The top level domain name “.com” is appended thereto completing the domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to differentiate one from the other for the purpose of the Policy. In fact, Respondent’s use of the term “catalog” in the domain name is suggestive of Complainant’s retail catalog related business and thus adds to any confusion between the domain name and Complainant’s trademark. Further, the addition of the “.com” gTLD is immaterial to the Panel’s analysis. Therefore, the Panel finds that Respondent’s <carolwrightcatalog.com> domain name is confusingly similar to Complainant’s CAROL WRIGHT mark pursuant to Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “HEMANG INFRUSTRUCTURE PRIVATE LIMITS.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the <carolwrightcatalog.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the domain name to address a website containing pay-per-click links to third parties some of which compete with Complainant. Such links include “Carol Wright Gifts” and “Harriet Carter Catalog.” Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(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.”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4 (b) circumstance are present as well as other circumstances which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has suffered adverse decisions as a respondent in multiple prior UDRP proceedings. These UDRP decisions suggest Respondent’s bad faith in the current proceeding under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”).
Finally and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address a website that offers pay-per-click links to third parties, some of which are Complainant’s competitors. Respondent’s use of a confusingly similar domain name which disrupts Complainant’s business and trades upon Complainant’s goodwill for commercial gain, as Respondent does here, demonstrates bad faith under Policy ¶ 4(b)(iii) & (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 Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carolwrightcatalog.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 16, 2017
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