Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp v. DOMAeN.com / Rickson Rodricks
Claim Number: FA1902001829135
Complainant is Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is DOMAeN.com / Rickson Rodricks (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carolwrightgift.com>, registered with eNom, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2019; the Forum received payment on February 8, 2019.
On February 11, 2019, eNom, LLC confirmed by e-mail to the Forum that the <carolwrightgift.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 February 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@carolwrightgift.com. Also on February 14, 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.
On March 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 Dr. Leonard's Healthcare Corp., which was acquired by Amerimark Direct, LLC, has been the leading direct mail marketer of affordable gift items, apparel, footwear and personal care items including: diet & exercise aids, skin & dental care items, and sight & sound aids. Over the years, it has expanded its product selection to include discounted home furnishings, bed and bath accessories, and personal gift items. Complainant has rights in the CAROL WRIGHT GIFTS mark through its use of the mark since 1972 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <carolwrightgift.com> domain name, registered on April 28, 2002, is identical or confusingly similar to Complainant’s mark as it removes the letter “s,” removes the spaces, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <carolwrightgift.com> 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 also 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 uses the domain name to commercially benefit by redirecting users to a website featuring generic third-party links, some of which compete with Complainant.
Respondent registered and uses the <carolwrightgift.com> domain name in bad faith. Respondent has engaged in an ongoing pattern of bad faith registration of domain names, as it has numerous adverse UDRP decisions against it. Further, Respondent disrupts Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users to its click-through website where it displays links to generic third-party websites, some of which compete with Complainant.
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;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed 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:
(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.”).
Complainant claims rights in the CAROL WRIGHT GIFTS trademark through its registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel may find that Complainant has established rights in the CAROL WRIGHT GIFTS mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <carolwrightgift.com> domain name is identical or confusingly similar to Complainant’s mark as it removes the letter “s,” removes the spaces, and adds the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). The Panel therefore finds that the <carolwrightgift.com> domain name is confusingly similar to the CAROL WRIGHT GIFTS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends that Respondent has no rights or legitimate interests in the <carolwrightgift.com> domain name. Where a response is lacking, relevant information may include the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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 record identifies “DOMAeN.com / RICKSON RODRICKS” as the registrant of the disputed domain. Further, Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and that Complainant has not given Respondent permission to use the mark in any manner. Accordingly, and in the absence of any Response or other submission by the Respondent, the Panel agrees that Respondent is not commonly known by the <carolwrightgift.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name to commercially benefit by redirecting users to a website featuring generic third-party links, some of which compete with Complainant. Using a domain name to offer links to services in direct competition with a complainant generally does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the website home page that resolves from the <carolwrightgift.com> domain name, and the page displays what appear to be monetized pay-per-click links with titles such as “Edible Gift” and “Carol Wright.” Accordingly, under the circumstances of this case, the Panel agrees that such use is not bona fide, fair, or otherwise legitimate and finds that Respondent’s use of the disputed domain name to display such hyperlinks fails to confer rights and legitimate interests in the disputed domain for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent disrupts Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users to its pay-per-click website where it displays links to generic third-party websites, some of which are claimed compete with Complainant. Using a disputed domain name to commercially benefit from competing hyperlinks can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As noted above, Complainant provides a screenshot of the disputed domain’s resolving home page which displays links such as “Edible Gift” and “Carol Wright.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv)
Complainant further contends that Respondent has engaged in an ongoing pattern of bad faith registration of domain names, as it has numerous adverse UDRP decisions against it. A complainant may cite prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant submits into evidence copies of three prior adverse UDRP decisions which have listed the respondent as “domaen.com” and “Rickson Rodricks,” the same Respondent in the instant proceeding. Accordingly, the Panel finds that Respondent has engaged in a pattern of conduct whereby it registers domain names that copy well-known trademarks in an effort to prevent the owners of such trademarks from reflecting their marks in corresponding domain names. Respondent’s prior adverse UDRP history further supports the conclusion that Respondent has registered and used the <carolwrightgift.com> domain name in bad faith 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 <carolwrightgift.com> domain name be TRANSFERRED from Respondent to Complainant.
March 9, 2019, Panelist
Dated: Steven M. Levy, Esq.
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