The RCS Network v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1710001755602
Complainant is The RCS Network (“Complainant”), represented by Frank N. Gaeta of Rich May, P.C.,, Massachusetts, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masssavepromo.com>, registered with GoDaddy.com, 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.
JAIME DELGADO as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2017; the Forum received payment on October 25, 2017.
On October 26, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <masssavepromo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@masssavepromo.com. Also on October 27, 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.
A timely Response was received and determined to be complete on November 15, 2017.
On November 20, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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.
Complainant requests that the domain name registration be terminated.
A. Complainant
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, 2006). See Compl. Ex. B. Respondent’s <masssavepromo.com> domain name is confusingly similar to Complainant’s mark as it incorporates the entire mark with the only alterations being the deletion of the space between the words of the mark, the addition of the descriptive term “promo,” and the affixation of the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <masssavepromo.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 operate a website that displays hyperlinks to various third-party websites, some of which compete with Complainant. See Compl. Ex. E.
Respondent registered and uses the <masssavepromo.com> domain name in bad faith. Respondent disrupts Complainant’s business through links to Complainant’s competitors. Respondent creates a likelihood of confusion with Complainant via Respondent’s use of the disputed domain name to display hyperlinks to third-party websites for Respondent’s commercial gain through the accrual of click-through fees.
(a) Respondent
B. Respondent
Respondent failed to submit a response in this proceeding instead Respondent agreed to transfer the domain name to Complainant.
Complainant is the registered owner of the MASS SAVE mark with United States Patent and Trademark Office Re. No. 3,136,287 registered August 29 2006.
Respondent owns the <masssavepromo.com> domain name.
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.
Preliminary Issue:
Consent to Transfer
Respondent consents to transfer the <masssavepromo.com> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, even though the Complainant requested that the disputed domain name be terminated it is more expedient to have the domain name transferred. The Panel decides to forego the traditional UDRP analysis and orders an immediate transfer of the <masssavepromo.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Respondent having consented to the transfer of domain name in dispute, , the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <masssavepromo.com> domain name be TRANSFERRED to Complainant.
Jaime Delgado, Panelist
Dated: November 29,2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page