The Honorable Michael W. Frerichs / Office of the Illinois State Treasurer v. Domain Admin ) BrightStart.com / FindYourDomain.com
Claim Number: FA1804001781627
Complainant is The Honorable Michael W. Frerichs / Office of the Illinois State Treasurer (“Complainant”), represented by Adam K. Beattie of Chuhak & Tecson, P.C., Illinois, USA. Respondent is Domain Admin / FindYourDomain.com (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brightstart.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2018; the Forum received payment on April 12, 2018.
On April 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <brightstart.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”).
Written Notice of the Complaint, setting a deadline of May 8, 2018 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@brightstart.com. Also on April 18, 2018, 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 May 11,2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, The Honorable Michael W. Frerichs, is the owner of the BRIGHT START mark which is affiliated with the Bright Start College Savings Program, a qualified tuition program under the provisions of section 529 of the Internal Code that has been organized with the State of Illinois by the Treasurer since the year 2000. Further, Complainant has expended significant resources on marketing and public information campaigns designed to raise public awareness on these accounts. Complainant owns a registration for the BRIGHT START mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,954,499 registered May 3, 2011). See Compl. Ex. 1. Further, the BRIGHT START mark has been continuously registered since November, 2000 with the USPTO (Reg. No. 2,500,323, filing date Nov. 2, 2000, registered Oct. 23, 2001). Respondent’s disputed domain name is identical to Complainant’s mark as Respondent has only removed a space from Complainant’s mark and added the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Further, Respondent is not licensed or authorized to use the Complainant’s mark. Respondent uses Complainant’s mark in the text of disputed domain name and in links to pay-per-click search results. See Compl. Ex. 4. The latter search results contain numerous links to financial products that offer none of the benefits of Complainant’s Bright Start College Savings Program or 529 College Savings accounts in general. See Compl. Ex. 5.
Respondent registered and used the domain name at issue in bad faith by using the domain name for commercial gain, and as demonstrated by Respondent’s previous failure to use the domain name until early 2007.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on February 17, 2004.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and Respondent has engaged in bad faith use and registration of the disputed 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.
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 Panel finds that the disputed domain name, <brightstart.com>, is confusingly similar to Complainant’s trademark, BRIGHT START. Complainant has adequately pled its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely deleting a space from the trademark and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no permission, right, or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
The Panel further finds that Respondent fails to use the disputed domain name in connection with a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). Instead, Respondent uses the BRIGHT START mark in connection with a resolving website that contains pay-per-click links, some of which compete with Complainant’s business. Use of a disputed domain name to host pay-per-click links that may compete with a complainant’s business does not evince a finding of a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). Complainant submits screenshot evidence of the resolving website for the disputed domain name which contains pay-per-click links related to Complainant’s business. See Compl. Ex. 4.
The Panel finds that Respondent lacks rights and legitimate interests in the <brightstart.com> domain name per Policy ¶¶ 4(c)(i) & (iii).
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently registered and used the <brightstart.com> domain name in bad faith as Respondent intentionally attracts, for commercial gain, Internet users via the confusion created by the disputed domain name and the pay-per-click links on the resolving website. Use of a disputed domain name to host pay-per-click links for a respondent’s commercial gain does not represent good faith per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). Complainant asserts Respondent registered the disputed domain name in 2004, four years after Complainant registered the BRIGHT START mark and expended significant resources to promote and increase the notoriety of the mark. Complainant submits screenshot evidence of the pay-per-click advertisements on the resolving page of the <brightstart.com> domain name. See Compl. Ex. 5.
The Panel, therefore, finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Last, Complainant argues Respondent’s bad faith is further evidenced by Respondent’s failure to make any use of the domain name until early 2007. Panels have found that the inactive holding of a domain name demonstrates bad faith per Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant submits evidence of Respondent’s use of the disputed domain name to host various advertisements both historically and today. See Compl. Grp. Ex. 6; Ex. 5.
As such, the Panel finds that Respondent’s inactive holding of the domain name is bad faith under Policy ¶ 4(a)(iii).
Finally, given the totality of the circumstances, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s prior rights and interests in and to the trademark BRIGHT START.
Therefore, the Panel finds that Respondent engaged in bad faith use and registration of 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 <brightstart.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 15, 2018
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