Hertza L.L.C. v. David Watanabe
Claim Number: FA1811001815211
Complainant is Hertza L.L.C. (“Complainant”), represented by Sarah R. Frankfort of de Diego Law, Texas, USA. Respondent is David Watanabe (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zerobounces.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2018; the Forum received payment on November 6, 2018.
On November 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <zerobounces.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 November 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@zerobounces.com. Also on November 8, 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 November 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in ZERO BOUNCE and ZEROBOUNCE and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark ZERO BOUNCE / ZEROBOUNCE in connection with its with its email validation service;
2. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 5,474,398, registered May 22, 2018 for a zero balance & device mark; Complainant also owns International (Madrid) Regn. No. 1426657, registered June 14, 2018 for ZeroBounce.
3. The disputed domain name was registered on October 21, 2018;
4. Initially the disputed domain name redirected Internet users to a website resolving from the disputed domain name, showing use of the term ZEROBOUNCE (one word) and offering an email validation service;
5. After notification of the Complaint the domain name redirected Internet users to an essentially identical website at www.emailbounce.co but using the name EMAILBOUNCE rather than an iteration of Complainant’s trademark;
6. Respondent purported to have cancelled the disputed domain name registration in consequence of the dispute but the Registrar locked the domain name pending the outcome of these Administrative Proceedings; and
7. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Preliminary Issue: Consent to Transfer
In response to a cease and desist letter Respondent wrote to Complainant stating that it has cancelled the disputed domain name. The WhoIs data did not reflect that claim. Respondent provided the Forum with a copy of a transcript of a purported “chat” with the Registrar wherein Respondent requested cancellation of the domain name. Current WhoIs data continues to list Respondent as the holder of the domain name which is currently locked.
It is open to the Panel to directly order transfer of the disputed domain name foregoing analysis under the Policy. Nonetheless, the Panel notes that this is one way in which cybersquatters attempt to avoid adverse findings against them and in view of the following findings determines in this case to apply the Policy and make the analysis thereunder.[i]
Primary Issues
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.
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.[ii]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. [iii] Clearly Complaint has trademark rights and for the purposes of comparison the Panel will reply on the Madrid registration. The Panel finds the disputed domain name to be confusingly similar to the trademark since the domain name takes the trademark and merely pluralizes the word “bounce” and adds the non-distinctive gTLD. The trademark remains the distinctive part of the domain name. [iv] The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The evidence is that the domain name has been used to offer services directly competitive with those offered by Complainant under the trademark. Accordingly, there has been no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name. Panel finds that Complainant has made a prima facie case. [vi]
The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. The Panel finds that Respondent registered a confusingly similar domain name primarily for the purpose of attracting Internet users to Respondent’s website for commercial gain.[vii] The Panel finds registration and use of the domain name in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zerobounces.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 5, 2018
[i] See, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008).
[ii] See, for example, 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); 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.”).
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iv] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; Ansell Limited v. John Okeke, FA 1785481 (Forum June 5, 2018) finding <anssell.com> confusingly similar to the ANSELL mark, despite the added letter “s” and “.com” gTLD).
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) finding that complainant provided freelance talent services, and that respondent competed 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; Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”
[vii] See, for example, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business.
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