Airgas, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1805001788604
Complainant is Airgas, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airgascareers.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 31, 2018.
On May 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <airgascareers.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 June 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@airgascareers.com. Also on June 4, 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 June 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the AIRGAS mark, Complainant is the leading supplier of industrial, medical and specialty gases and related products in the United States.
Complainant holds a registration for the AIRGAS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,646,540, registered June 4, 1991, last renewed as of July 15, 2011.
Respondent registered the domain name <airgascareers.com> on April 16, 2018.
The domain name is confusingly similar to Complainant’s AIRGAS mark.
Respondent has not been commonly known by the domain name.
Respondent does not have rights in the AIRGAS mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to host a webpage that contains pay-per-click links to the websites of Complainant’s commercial competitors.
Respondent likely commercially benefits from its use of the domain name.
The webpage resolving from the domain name features a link to a web site that offers the domain name for sale.
Respondent lacks rights to and legitimate interests in the domain name.
Respondent registered the domain name under a privacy service in an attempt to hide its’ true identity.
Respondent is a serial cyber-squatter who has exhibited a pattern of registration of domain names derived from the trademarks of others.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in its AIRGAS trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of a mark with the USPTO adequately proved its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Respondent asserts that its residence is “international”). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <airgascareers.com> domain name is confusingly similar to Complainant’s AIRGAS trademark. The domain name incorporates the AIRGAS mark in its entirety, with only the addition of the descriptive term “careers,” which relates to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum November 18, 2005) (finding, under Policy ¶ 4(a)(i), that the addition of both the word “advisors” and the gTLD “.com” to the mark of another in creating a domain name did not avoid a finding of confusing similarity as between that mark and the domain name).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <airgascareers.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <airgascareers.com> domain name. In addition, there is nothing in the record before us to suggest that Complainant has licensed or otherwise authorized Respondent to use the AIRGAS mark for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Carolina Rodrigues / Fundacion Comercio Electronico,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the domain name <chevron-europe.com> where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <airgascareers.com> domain name resolves to a pay-per-click page displaying links to the websites of third parties which operate in competition with the business of Complainant, and that Respondent likely benefits financially from the operation of the resolving website. This employment of the domain name is neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the challenged domain name as provided in those subsections of the Policy. See, for example, Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017):
Respondent’s use of … [a contested domain name] … also does not qualify as a bona fide offering … [because] …the … domain name resolves to a site containing pay-per-click hyperlinks and advertisements …. Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.
See also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum August 21, 2017):
Respondent uses the domain name to divert Internet users to Respondent’s website … [thus] … confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent is a serial cyber-squatter who has demonstrated a pattern of registration and use of domain names derived from the trademarks of others, which domain names were found, in more than a dozen instances, to have been registered and used in bad faith. See, for example, Staples, Inc. and Staples the Office Superstores, LLC v. FCS Holdings Corp / Carolina Rodrigues, FA 428752 (Forum, April 4, 2012); and 7-Eleven, Inc. v. Carolina Rodrigues / Privacy Services Limited, FA 782025 (Forum May 14, 2018). Under Policy ¶ 4(b)(ii), a pattern of bad faith registration and use of domain names in other instances stands as proof of Respondent’s bad faith in registering and using the domain name <airgascareers.com> here in issue. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 464477 (Forum November 30, 2012) (finding, under Policy ¶ 4(b)(ii), that, where the record reflected that a respondent had been a party to other proceedings in which the transfer of disputed domain names was ordered in favor of various UDRP complainants, such a pattern of bad faith registration and use stood as evidence of bad faith in the registration and use of the domain names there is issue).
We are also convinced by the evidence that Respondent employs the disputed <airgascareers.com> domain name, which we have found to be confusingly similar to Complainant’s AIRGAS trademark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iii), this likewise shows Respondent’s bad faith in registering and using the domain name. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 760954 (Forum January 8, 2018):
Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the … domain name pursuant to Policy ¶ 4(b)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <airgascareers.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 9, 2018
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