RetailMeNot, Inc. v. Faheem Ansari / odits
Claim Number: FA1901001824444
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Faheem Ansari / odits (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theretailmenot.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2019; the Forum received payment on January 9, 2019.
On January 11, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <theretailmenot.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2019 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@theretailmenot.com. Also on January 11, 2019, 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. Respondent did however send some documents to the Forum, see below.
On February 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it has provided online coupons and advertising services since at least as early as 2006. Complainant offers these services via its online website and its mobile applications. It facilitated more than $4.8 billion in global sales in 2017, had in excess of 517 million site visits in the last twelve months, with over 18 million unique mobile visitors and over 10 million active email subscribers. Complainant has rights in the RETAILMENOT mark through its registration of the mark in the United States in 2013.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporate the mark and merely adds the article “the” and the generic TLD “.com.”
According to Complainant, Respondent has no rights or legitimate interests in the disputed 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 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 is making a commercial use of the domain name to misleadingly divert Complainant’s customers to a website where Respondent appropriates Complainant’s marks and logos and offers a competing service.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to confuse Internet users by redirecting users to a website displaying Complainant’s marks and logos while purporting to offer competing coupon services. Further, Respondent must have had knowledge of Complainant’s rights in the RETAILMENOT mark given its use of Complainant’s mark and logo on the resolving webpage associated with the disputed domain name.
B. Respondent
Respondent did not reply. However, on January 30, 2019, it sent various documents to the Forum. The only ones of possible relevance to the instant dispute are:
· A Pakistani trademark application dated August 8, 2018. The trademark examiner raised an objection because of prior trademark applications filed in 2016 and 2017. Unless the Respondent replied by November 28, 2018, its application would be considered to have been abandoned. Respondent has not presented any evidence to the effect that it replied to that objection.
· A Pakistani copyright application dated September 13, 2018, for a stylized rendition of “The Retail Me Not” that mimics Complainant’s logo.
Complainant owns the mark RETAILMENOT and uses it to provide coupons and advertising services.
Complainant’s rights in its mark dates back to at least 2013.
The disputed domain name was registered on May 11, 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name resolves to a website that features services that compete with those of Complainant, and that displays Complainant’s mark and logo.
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 disputed domain name is confusingly similar to Complainant’s mark as it incorporates the mark and merely adds the article “the” and the “.com” generic top-level domain (“gTLD”). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds that the <theretailmenot.com> domain name is confusingly similar to the RETAILMENOT mark under Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use its mark in any way. Respondent is not commonly known by the disputed domain name.: where a response is lacking, relevant information includes the WHOIS and any other information in the record. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, the WHOIS identifies “Faheem Ansari” as the registrant.
Respondent has submitted an application for copyright registration of a stylized rendering of “The Retail Me Not” that mimics Complainant’s logo, and an application for a Pakistani trademark for THE RETAIL ME NOT. The trademark examiner raised an objection to that registration; Respondent has not submitted any evidence to the effect that the registration was granted.
Both of the applications mentioned above were submitted well after the registration of the disputed domain name, and many years after the Complainant started its business and registered its own RETAILMENOT mark. The Panel finds that Respondent knew of Complainant’s mark because it used the very same stylized logo. These circumstances indicate that Respondent applied for its copyright and trademark in attempt to secure to itself rights in the term THE RETAIL ME NOT and thus to legitimize its ownership of the disputed domain name and circumvent the application of the Policy. See Aukro Ukraine LLC v. PrivacyYes.com, Igor Spodin, D2013-1568 (WIPO Nov. 5, 2013); see also Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., D2008-1379 (WIPO Oct. 31, 2008).
Accordingly, the Panel finds that that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is making a commercial use of the disputed domain name to misleadingly divert Complainant’s customers to a website where Respondent appropriates Complainant’s marks and logos and offers a competitive service. Using a confusingly similar domain name to pass off as a complainant and directly compete with a complainant fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes 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); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). As such, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and/or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
As already noted, Respondent attempts to confuse Internet users by redirecting them to a website displaying Complainant’s mark and logo while purporting to offer competing coupon services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving webpage displays Complainant’s mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theretailmenot.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 1, 2019
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