Young PS Acquisitions, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2005001896841
Complainant is Young PS Acquisitions, LLC (“Complainant”), represented by Eleanor Atkins of McDermott Will & Emery LLP, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plack-smacker.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2020; the Forum received payment on May 18, 2020.
On May 19, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <plack-smacker.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 May 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2020 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@plack-smacker.com. Also on May 26, 2020, 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 June 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Young PS Acquisitions, LLC, is in the business of development, manufacture, and marketing of dental supplies and equipment. Complainant has rights in the PLAK SMACKER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,806,165, registered Nov. 23, 1993).
2. Respondent’s <plack-smacker.com>[i] domain name is confusingly similar to Complainant’s PLAK SMACKER mark since it merely adds the letter “c” and the “.com” generic top-level domain (“gTLD”) to the mark.
3. Respondent does not have rights or legitimate interests in the <plack-smacker.com> domain name because Respondent is not commonly known by the domain name and is not authorized or permitted to use Complainant’s PLAK SMACKER mark.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use of the domain name.
5. Respondent registered and uses the <plack-smacker.com> domain name in bad faith. Respondent offers the domain name for sale.
6. Respondent also has engaged in a pattern of registering domain names that correspond to well-known marks.
7. Additionally, Respondent disrupts Complainant’s business by registering a domain name that includes Complainant’s mark.
8. Further, Respondent fails to use the <plack-smacker.com> domain name for any legitimate purpose.
9. Finally, Respondent’s typosquatting behavior is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PLAK SMACKER mark. Respondent’s domain name is confusingly similar to Complainant’s PLAK SMACKER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <plack-smacker.com> domain name and that Respondent registered and uses the domain name 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the PLAK SMACKER mark based upon registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,806,165, registered Nov. 23, 1993). Therefore, the Panel holds that Complainant has rights in the PLAK SMACKER mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <plack-smacker.com>
domain name is confusingly similar to Complainant’s PLAK SMACKER mark because
it merely adds the letter “c” and the “.com” gTLD to the mark. Addition or
removal of individual letters and addition of a gTLD do not sufficiently
distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev,
FA 1784651 (Forum June 5, 2018)
(holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not
distinguish the Domain Name from Complainant’s mark.”). Complainant
additionally has shown that the <plack-smacker.com>
domain name is a typosqatted version of Complainant’s <plaksmacker.com>
domain name, which increases the confusing similarity. Thus, the <plack-smacker.com> domain name
is identical and/or confusingly similar to Complainant’s mark under Policy ¶
4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <plack-smacker.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <plack-smacker.com> domain name because Respondent is not commonly known by the domain name and is not authorized or permitted to use Complainant’s PLAK SMACKER mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico,” and Complainant contends, without contrary evidence in the record, that it did not authorize Respondent’s use of the PLAK SMACKER mark. Therefore, Respondent is not commonly known by the <plack-smacker.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <plack-smacker.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use of the domain name. Failure to make active use of a domain name incorporating the mark of another does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The evidence shows that Respondent has owned the <plack-smacker.com> domain name for more than seven months and has failed to make any developments or demonstrable preparations to use the domain name. Thus, Respondent’s use of the <plack-smacker.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <plack-smacker.com> domain name in bad faith as evidenced by Respondent’s offer to sell the domain name. An offer to sell a domain name for a price higher than the costs associated with registration may evidence bad faith under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). Complainant provides a screenshot of the <plack-smacker.com> domain name for sale for a price of $999.00. Therefore, the Panel finds bad faith registration and use under Policy ¶4(b)(i).
Finally, Complainant argues that Respondent’s typosquatting behavior is evidence of bad faith. Typosquatting may act as independent evidence of bad faith under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Respondent’s registration of a domain name that adds a single letter to the PLAK SMACKER mark and differs by only one letter from Complainant’s legitimate <plaksmacker.com> domain name constitutes typosquatting. The Panel agrees with Complainant and finds 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 <plack-smacker.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 24, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page