Socialbakers a.s. v. Domain Administrator - Fundacion Private Whois
Claim Number: FA1408001572940
Complainant is Socialbakers a.s. (“Complainant”), represented by Iva Zothova of Pierstone s.r.o advokatni kancelar, Czech Republic. Respondent is Domain Administrator - Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <social-bakers.net>, registered with Internet.bs Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2014; the National Arbitration Forum received payment on August 1, 2014.
On August 6, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <social-bakers.net> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2014 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@social-bakers.net. Also on August 6, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 has rights in the SOCIALBAKERS mark under Policy ¶ 4(a)(i). Complainant registered the SOCIALBAKERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,513,116 filed November 8, 2012, registered April 14, 2014). Complainant registered the SOCIALBAKERS mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,158,525 filed June 30, 2012, registered November 16, 2012). Respondent’s <social-bakers.net> domain name is confusingly similar to Complainant’s SOCIALBAKERS mark. Respondent adds a hyphen and the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the <social-bakers.net> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized, licensed or otherwise permitted Respondent to use the SOCIALBAKERS mark or the disputed domain name. Additionally, the WHOIS information for the disputed domain name lists “Domain Administrator” as the registrant. Respondent’s disputed domain name resolves to a website containing an advertisement stating “Buy Facebook Likes” and an offer for buying 1,000 Facebook likes for $7.99. Respondent’s resolving website offers similar advertisements including Instagram and YouTube. When the links are clicked, the hyperlinks do not function. Respondent’s resolving website also contains sponsored, click through advertisements redirecting internet users to third-party websites, including Complainant’s competitors.
Respondent registered and is using the <social-bakers.net> domain name in bad faith. Respondent offered the disputed domain name for sale through a domain name marketplace. Respondent has a pattern of bad faith registrations for infringing domain names. Respondent has been involved in 96 panel proceedings before the National Arbitration Forum. 91 of those cases were ordered by the panel to be transferred to the complainant. Respondent’s disputed domain name is used to resolve to a website that is visually similar to Complainant’s, and offers services that compete with Complainant. Respondent’s use of the disputed domain name serves to disrupt Complainant’s business by redirecting Internet users away from Complainant. Respondent’s disputed domain name attempts to attract and confuse Internet users by offering links to third parties that compete with Complainant’s business, and Complainant thereby commercially profits. Respondent had knowledge of Complainant and Complainant’s rights in the SOCIALBAKERS mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Socialbakers a.s., provides social media network statistics and analysis from Facebook, Twitter, Google+, Linkedin, and YouTube. Complainant has rights in the SOCIALBAKERS mark under Policy ¶ 4(a)(i). Complainant registered the SOCIALBAKERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,513,116 filed November 8, 2012, registered April 14, 2014). Complainant registered the SOCIALBAKERS mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,158,525 filed June 30, 2012, registered November 16, 2012).
Respondent, Domain Administrator - Fundacion Private Whois, registered the <social-bakers.net> domain name on October 24, 2013. Respondent’s disputed domain name resolves to a website containing an advertisement stating “Buy Facebook Likes” and an offer for buying 1,000 Facebook likes for $7.99. Respondent’s resolving website offers similar advertisements including Instagram and YouTube. When the links are clicked, the hyperlinks do not function. Respondent’s resolving website also contains sponsored, click through advertisements redirecting internet users to third-party websites, including Complainant’s competitors.
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(e), 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 (Nat. Arb. 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 has rights in the SOCIALBAKERS mark under Policy ¶ 4(a)(i) through registration with the USPTO and with OHIM, effective November 8, 2012, and June 30 2012, respectively, the dates of filing. Evidence of registration with the USPTO or OHIM is sufficient to establish rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)). It is irrelevant whether Complainant registered the disputed domain name in the location of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <social-bakers.net> domain name is confusingly similar to Complainant’s SOCIALBAKERS mark under Policy ¶ 4(a)(i). Respondent adds a hyphen and the gTLD “.net” to Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (hyphens and top-level domains are irrelevant for purposes of the Policy).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent has no rights or legitimate interests in the <social-bakers.net> domain name under Policy ¶ 4(c)(ii). Respondent is not commonly known by the disputed domain name. Complainant has not authorized, licensed or otherwise permitted Respondent to use the SOCIALBAKERS mark or the disputed domain name. Additionally, the WHOIS information for the disputed domain name lists “Domain Administrator” as the registrant. The Panel finds that Respondent is not commonly known by the <social-bakers.net> domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website containing an advertisement stating “Buy Facebook Likes” and an offer for buying 1,000 Facebook likes for $7.99. Respondent’s resolving website offers similar advertisements including Instagram and YouTube. When the links are clicked, the hyperlinks do not function. Respondent’s resolving website contains sponsored, click through advertisements redirecting internet users to third-party websites, including Complainant’s competitors. Respondent’s website displays “testimonials” from alleged customers who were satisfied with Respondent’s services. The Panel finds that Respondent’s commercial use of the disputed domain name to attempt to sell products that compete with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent is attempting to confuse Internet users by copying the color scheme of Complainant’s website and Complainant’s official logo. The panel inToronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) previously found that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use. Additionally, in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the respondent attempted to pass itself off as the complainant online, which was a blatant unauthorized use of the complainant’s mark and was evidence that the respondent has no rights or legitimate interests in the disputed domain name. The Panel finds conclude that Respondent’s attempt to appear in association with Complainant, or as Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and is using the <social-bakers.net> domain name in bad faith under Policy ¶ 4(b)(i). Respondent offered the disputed domain name for sale through a domain name marketplace for $2,000, which is evidence of bad faith under Policy ¶ 4(b)(i). SeeTech. Props., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where the respondent verbally offered the domain names for sale for $2,000).
Respondent’s disputed domain name is used to resolve to a website that is visually similar to Complainant’s, and offers services that compete with Complainant. Respondent’s use of the disputed domain name disrupts Complainant’s business by redirecting Internet users away from Complainant. The Panel finds that Respondent’s registration and use of the <social-bakers.net> domain name constitute bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s disputed domain name attempts to attract and confuse Internet users by offering links to third parties that compete with Complainant’s business, and Complainant thereby commercially profits. By incorporating Complainant’s trademark into the disputed domain name, and by using Complainant’s trademarks and similar logos at the corresponding website, Respondent creates the false impression of a site that originates with or is sponsored by Complainant. Respondent offers advertisements for services that compete with Complainant. The Panel finds that Respondent registered and uses the <social-bakers.net> domain name in bad faith under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Respondent had actual knowledge of Complainant’s SOCIALBAKERS mark and, therefore, registered the <social-bakers.net> domain name in bad faith under to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <social-bakers.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 10, 2014
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