SimpliSafe, Inc. v. Prob Clue
Claim Number: FA2001001880159
Complainant is SimpliSafe, Inc. ("Complainant"), represented by Joshua M. Dalton of Morgan, Lewis & Bockius LLP, Massachusetts, United States. Respondent is Prob Clue ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplisafelogin.com>, registered with Wild West Domains, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2020; the Forum received payment on January 22, 2020.
On January 23, 2020, Wild West Domains, LLC confirmed by email to the Forum that the <simplisafelogin.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 January 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@simplisafelogin.com. Also on January 23, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on January 28, 2020.
On January 31, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides home security related goods and services. Complainant has used the SIMPLISAFE trademark in connection with such products since 2008, and states that it has invested considerable time, effort, and money in advertising and promotion. Complainant claims common law rights in the mark and owns various U.S. trademark registrations for SIMPLISAFE, in both standard character and stylized form.
Respondent registered the disputed domain name <simplisafelogin.com> in November 2018. The domain name is being used for a website that prominently displays Complainant's SIMPLISAFE mark, including the stylized form used by Complainant, along with images of Complainant's products. The website also contains sponsored links to other sites, including that of a competitor of Complainant, along with a form requesting a user's name, email address, and other information, which Complainant refers to as a phishing scheme. Complainant states that it does not have a business relationship with Respondent; that Respondent's website is not affiliated with or sponsored or endorsed by Complainant; and that Respondent is not authorized to use Complainant's mark or to resell or promote Complainant's products.
Complainant contends on the above grounds that the disputed domain name <simplisafelogin.com> is confusingly similar to its SIMPLISAFE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent states that it has deleted all content and images from the website, and offers to transfer the disputed domain name. In other correspondence to the Forum, Respondent apologized and stated as follows: "This was we purely Blog Website and we were not involved in any kind of Technical Support services for this product. Also, Ads that are active on this website were from Google Adsense services and we really do not have any control over these ads."
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.
The Panel notes that Respondent has offered to transfer the disputed domain
name to Complainant, although the Panel has not been informed of a settlement
pursuant to Paragraph 17 of the Rules. Based upon Respondent's agreement to
transfer the domain name, the Panel is authorized to forego the traditional
analysis and enter an award for Complainant. See, e.g., Transamerica Corp.
v. Michael Decker / Decker Retirement Planning, FA 1846726 (Forum July 1, 2019); BBY Solutions,
Inc. v. Zip.ca / Curt Millar, FA 1365325 (Forum
Feb. 7, 2011). However, having considered the circumstances of this case,
including Respondent's use of the disputed domain name, the Panel considers it
appropriate to address the merits of the matter.
The disputed domain name <simplisafelogin.com> incorporates Complainant's registered SIMPLISAFE trademark, adding the generic term "login" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Arlo Technologies, Inc. v. Fateh Singh / THE TECHNICAL BOY, FA 1866728 (Forum Nov. 15, 2019) (finding <arlologin.com> confusingly similar to ARLO); Facebook, Inc., Instagram, LLC, WhatsApp Inc. v. Linyanxiao, D2018-1089 (WIPO July 3, 2018) (finding <instagramlogin.com> confusingly similar to INSTAGRAM). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. It is being used for a website that is intended to create a false appearance of association with Complainant, and that promotes a competitor of Complainant and solicits personal information from users.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name. Respondent neither claims any such rights or interests nor offers any evidence thereof. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that merely appends the term "login" to Complainant's mark. Respondent is using that domain name for an elaborate website designed to pass off Complainant while promoting a competitor of Complainant and soliciting visitors' personal information. Such conduct is indicative of bad faith registration and use under the provisions of the Policy cited above. See, e.g., Society of Actuaries v. Ou Zonghong, FA 1669726 (Forum May 17, 2016) (finding bad faith in similar circumstances); Yahoo! Inc. v. Dharma Budhathoki / Dry Ice Solutions / David Palomino Pariona / None / Anais Marilu Quispe Cardenas / None, FA 1566763 (Forum Aug. 2, 20140 (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simplisafelogin.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 1, 2020
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