Midwest Doulas, LLC v. Hannah Baker
Claim Number: FA1807001795263
Complainant is Midwest Doulas, LLC (“Complainant”), represented by Kenneth Kunkle of Kunkle Law, PLC, Minnesota, USA. Respondent is Hannah Baker (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mwdoulas.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 3, 2018; the Forum received payment on July 3, 2018.
On July 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mwdoulas.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 July 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@mwdoulas.com. Also on July 6, 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 August 2, 2018 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, Midwest Doulas LLC, provides birth doula services to expectant and new parents.
Complainant uses its MWDOULAS mark to promote its products and services and has common law rights in the mark.
Respondent’s <mwdoulas.com> domain name is identical to Complainant’s MWDOULAS mark because it merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <mwdoulas.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its MWDOULAS mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Hannah Baker” as the registrant. Respondent is not using the <mwdoulas.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass itself off as Complainant and deceptively collect users’ information.
Respondent registered and uses the <mwdoulas.com> domain name in bad faith. Respondent attempts to attract users to the disputed domain name’s website, which features Complainant’s MWDOULAS mark and prompts users to provide personal information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant’s has trademark rights in its MWDOULAS mark.
Complainant’s rights in the MWDOULAS mark were established prior to Respondent’s registration of the at-issue domain name.
Respondent’s uses the <mwdoulas.com> domain name to pass itself off as Complainant and thereby benefit from internet traffic intended for Complainant so that it may extract personal information from those misdirected to the <mwdoulas.com> website.
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.
There is no requirement under the Policy that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case, Complainant proffers unopposed documentary evidence of the MWDOULAS mark’s having acquired secondary meaning dating back prior to Respondent’s registration of the at-issue domain name. In light of the foregoing, the Panel finds that Complainant acquired common law trademark rights in the MWDOULAS mark before Respondent’s acquisition of the <mwdoulas.com> domain name.
Next, the <mwdoulas.com> domain name contains Complainant’s entire MWDOULAS trademark appended with a necessary top-level domain name, here “.com.” The slight difference between Respondent’s domain name and Complainant’s trademark is insufficient to distinguish one from the other for the purpose of the Policy. Further, the <mwdoulas.com> website features information about Complainant’s business and trademark which add to any confusion caused by the use of Complainant’s trademark in the at-issue domain name. Therefore, the Panel finds Respondent’s <mwdoulas.com> domain name to be identical to Complainant’s MWDOULAS trademark pursuant to Policy ¶ 4(a)(i). See International Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark and adding the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy.”); see also, LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”)
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).
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 domain name.
The WHOIS information for the disputed domain name lists “Hannah Baker” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <mwdoulas.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s uses the <mwdoulas.com> domain name to pass itself off as Complainant and thereby lure visitors to the <mwdoulas.com> website where it hopes to trick such visitors into giving up their personal contact information via an online email form. The domain name’s use 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 of such domain name under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Given the forgoing, 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.
The <mwdoulas.com> domain name was registered and used in bad faith. As discussed below without limitation, specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith regarding the <mwdoulas.com> under paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent’s domain name addresses a website designed to appear as if it is sponsored by Complainant. There, accidental visitors to the fraudulent website are presented with a form which captures their names and addresses; data which Respondent may then exploit. Using the <mwdoulas.com> domain name in this manner demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the MWDOULAS trademark before registering the <mwdoulas.com> domain name. Respondent’s prior knowledge is evident from the fact that Respondent incorporates Complainant’s entire mark in to the at-issue domain name, displays Complainant’s trademark on the <mwdoulas.com> website and attempts to pass itself off as Complainant. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use 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 "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 <mwdoulas.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 6, 2018
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