DECISION

 

The RCS Network v. Micheal Ard

Claim Number: FA1710001755577

PARTIES

Complainant is The RCS Network (“Complainant”), represented by Frank N. Gaeta of Rich May, P.C., Massachusetts, USA.  Respondent is Micheal Ard

(“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <masssaveheatloan.com>, registered with Name.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 25, 2017; the Forum received payment on October 25, 2017.

 

On October 26, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <masssaveheatloan.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name.  Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 October 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@masssaveheatloan.com.  Also on October 26, 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 November 20, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is an unincorporated collaborative association of Massachusetts utility companies and energy efficiency services providers. Complainant registered the MASS SAVE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,136,287, registered Aug. 29, 2005). See Compl. Ex. B. Complainant also has common law rights to the MASS SAVE HEAT LOAN mark through its extensive use on its website since 2010. See Compl. Ex. C. Respondent’s <masssaveheatloan.com> is confusingly similar to the Complainant’s MASS SAVE mark because it incorporates the mark in its entirety, sans the space, and adds the generic/descriptive term “heatloan” and the generic top-level domain (“gTLD”) “.com.” Further, the domain name is nearly identical to Complainant’s MASS SAVE HEAT LOAN mark as it simply omits the spaces between the terms of the mark and adds the gTLD “.com.”

2.    Respondent has no rights or legitimate interests in the <masssaveheatloan.com> domain name. There is no evidence that Respondent is commonly known by the disputed domain name, nor has Complainant granted, a license or permission to Respondent to use Complainant’s marks in any way. Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s <masssaveheatloan.com> purports to match borrowers and lenders through an online matching service that requires a user to submit their personal information. See Compl. Ex. D. Respondent presumably receives some sort of matching fee, equivalent to containing click-through links on the webpage.

3.    Respondent registered and used <masssaveheatloan.com> in bad faith. Respondent uses the resolving domain to offering competing loan services and receive redirection fees, disrupting Complainant’s business and creating a likelihood of confusion with Complainant’s mark, likely causing customers to believe that the website is affiliated with and the lenders are approved by the Complainant. See Compl. Ex. D.

 

B.   Respondent

1.   Respondent did not submit a response.

 

FINDINGS

1.    Respondent’s <masssaveheatloan.com> domain name is confusingly similar to Complainant’s MASS SAVE mark.

2.    Respondent does not have any rights or legitimate interests in the <masssaveheatloan.com> domain name.

3.    Respondent registered or used the <masssaveheatloan.com> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims it registered the MASS SAVE mark with the USPTO (e.g., Reg. No. 3,136,287, registered Aug. 29, 2005). See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a 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 at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MASS SAVE mark.

 

Additionally, Complainant claims to hold common law rights in the MASS SAVE HEAT LOAN mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant bases its common law rights argument through its alleged extensive use on its website since 2010. See Compl. Ex. C. Complainant does not provide any documentation or additional arguments to conclusively establish its alleged common law rights. The Panel finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <masssaveheatloan.com> domain name is confusingly similar to Complainant’s MASS SAVE mark as it incorporates the mark in its entirety, sans the space, and adds the generic/descriptive term “heatloan” and the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”); see also 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.); 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). The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s registered MASS SAVE mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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 contends that Respondent has no rights or legitimate interests in the <masssaveheatloan.com> domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Micheal Ard” as the registrant.  Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the MASS SAVE or MASS SAVE HEAT LOAN marks. Panels may use these assertions as evidence of lacking rights or 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <masssaveheatloan.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant, or alternatively, commercially gains by receiving fees for directing users to loan services similar to click-through fees. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant, or redirects users to competing services, generally fails to make a bona fide offering of goods or services. See 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); see also 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.”). Complainant provides a screenshot of the resolving webpage, which contains boxes for users to enter personal information to which Respondent then presumably matches the user to a loan service. See Compl. Ex. D. The Panel agrees with Complainant and find that Respondent offers competing services, or redirects users to competing loan services, and thus fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Additionally, Complainant argues that Respondent registered and uses the <masssaveheatloan.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood of confusion with Complainant’s mark, likely causing customers to believe that the website is affiliated with and the lenders are approved by Complainant. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince 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 Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As mentioned in the previous section of this memo, Complainant provides a screenshot of the resolving webpage, which contains boxes for users to enter personal information to which Respondent then presumably matches the user to a loan service. See Compl. Ex. D. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <masssaveheatloan.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  December 4, 2017