Uline, Inc. v. ICS INC.
Claim Number: FA1709001747872
Complainant is Uline, Inc. (“Complainant”), represented by Tim Bucher of Uline, Inc., Wisconsin. USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ulinenet.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his her 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 September 7, 2017; the Forum received payment on September 7, 2017.
On September 11, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <ulinenet.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 September 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@ulinenet.com. Also on September 14, 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 October 6, 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, Uline, Inc. uses the ULINE mark to provide and market its products.
Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,165,496, registered June 16, 1998).
Respondent’s <ulinenet.com> is identical or confusingly similar to Complainant’s mark, as it contains the mark in its entirety, merely adding the generic term “net” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <ulinenet.com> domain name. Respondent is not commonly known by the domain name and Complainant has not granted respondent permission or license to use the ULINE mark for any purpose. Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is offering the domain name for sale. In addition, Respondent is offering hyperlinks to competing third party websites.
Respondent registered and uses the <ulinenet.com> domain name in bad faith. Respondent registered the domain name with the intent to sell. Respondent failed to respond to two cease and desist letters. In addition, Respondent is known as a cybersquatter. Finally, Respondent had actual knowledge of Complainant’s mark at the time registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ULINE mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its ULINE trademark.
Respondent’s <ulinenet.com> domain name addresses a webpage displaying links to Complainant’s competition. Respondent offers the at-issue domain name for sale.
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 ULINE trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <ulinenet.com> domain name contains Complainant’s ULINE trademark, appended with the generic term “net” and the top-level domain name “.com. ” These alterations to Complainant’s trademarks are insufficient to distinguish the at-issue domain name from Complainant’s mark for the purposes of the Policy ¶ 4 (a)(i). Therefore, the Panel finds that Respondent’s <ulinenet.com> domain name is confusingly similar to Complainant’s ULINE trademark. 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). Absent contrary evidence of Policy ¶4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “ICS INC.” and there is no evidence in the record which otherwise suggests that the Respondent is known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii) that Respondent is not commonly known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <ulinenet.com> domain name addresses a webpage which displays links to competing third party’s website. Respondent’s use of the at-issue domain name in this manner indicates 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). 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 under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s 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, in light of the domain name’s overt inclusion of Complainant’s well know mark it appears that Respondent’s intent in registering and using the <ulinenet.com> domain name was to capitalize on the goodwill associated with the ULINE trademark, rather than for some benign reason. Respondent has no affiliation with Complainant, yet endeavors to trick internet users into believing its <ulinenet.com> website is somehow sponsored or authorized by Complainant, when it is not. Respondent does so ostensibly so that it might benefit from increased web traffic to the <ulinenet.com> website. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith).
As mentioned above regarding rights and legitimate interests Respondent’s <ulinenet.com> domain name addresses a webpage linking to Complainant’s competition. Thereby, Respondent demonstrates its bad faith registration and use of the domain name under the Policy ¶ 4(b)(iv). See Agility Public Warehousing Co. v. Vu Anhquang, FA 1736852 (Forum July 17, 2017) ("A respondent’s use of disputed domain names to direct Internet users to a website which competes with the complainant is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).").
Additionally, Respondent publicly offers the <ulinenet.com> domain name for sale. The domain name is currently listed as available for purchase at the price of $4,809 on a secondary market domain name website. Respondent’s lack of a response acts as a silent admission as to the domain name’s “for-sale” status, notwithstanding any lack of foundation connecting Respondent to the online listing. 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.) see also, Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum Jul. 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).)
Next, Respondent has been named in numerous prior UDRP complaints. The parade of decisions disfavoring Respondent suggests Respondent’s bad faith in the instant dispute 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, Respondent registered <ulinenet.com> knowing that Complainant had trademark rights in the ULINE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s addition of a generic term to the ULINE mark in forming the <ulinenet.com> domain name. Respondent’s knowledge of Complainant’s trademark additionally makes clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value. Importantly, Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <ulinenet.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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 had "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 <ulinenet.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 8, 2017
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