The Number UK Ltd. and Grape Technology Group, Inc. v. Samuel Kearney
Claim Number: FA1412001594751
Complainant is The Number UK Ltd. and Grape Technology Group, Inc. (“Complainant”), represented by Ulrika E. Mattsson of McDermott Will & Emery LLP, Illinois, USA. Respondent is Samuel Kearney (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <118118money.net>, registered with TurnCommerce, Inc. DBA NameBright.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2014; the National Arbitration Forum received payment on December 11, 2014.
On December 11, 2014, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the National Arbitration Forum that the <118118money.net> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.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 December 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2015 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@118118money.net. Also on December 16, 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 January 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Pursuant to ICANN Rule 3(b)(viii), set forth below is the Trademark/Service Mark Information:
[a.] This Complaint is based on Complainants’ well-known and internationally registered 118 118® marks and their European-registered 118 118 MONEY marks.
[b.] Since 2003, Complainants have been providing directory assistance services and various related information services. For over 10 years, Complainants have been using the 118 118® marks and trade name (collectively, the “118 118 Marks”) in connection with its services. Complainants offer their services sold under the 118 118 name around the world. As a result of Complainants’ use and promotion of the 118 118 Marks, these marks are widely recognized internationally, particularly in the United Kingdom. In fact, "The Number 118 118" is the market leader in directory assistance in the United Kingdom. It offers much more than traditional directory assistance under the 118 118 Marks. Customers can get the information they want by calling, text messaging, or going online to www.118.com, and various other websites. Every week millions of customers are given the information they need to reach the people, places, and businesses they want to connect with through various 118 118 services offered by Complainants.
[c.] Complainants also offer services specifically under the 118118MONEY service mark, at www.118118money.com. 118 118 Money is a financial services business offering personal loans to customers who may find it hard to get credit from their banks, but are reluctant to obtain a payday loan. Since entering the market for such loans in the United Kingdom in 2013, Complainants have made it their business to offer a fair and transparent alternative to these forgotten borrowers.
[d.] Complainants own the following U.S. Federal Trademark Registration:
Trademark Registration Number
4,031,822
(September 27, 2011)
(Int'l Class: 38) Communications by computer terminals; communications by telephone; electronic mail services, facsimile transmission, electronic message sending; computer aided transmission of messages and images, telephone communication services and information services in the field of telephone communications; transfer of data by telecommunication; electronic transmission of data in the field of financial services, providing access to databases over the internet and electronic mail, communication by electronic computer terminals, telecommunications consultation and information services provided online from a computer database or from the internet; electronic transmission and retrieval of voice messages, mobile telephone and telephone communication services, telecommunication services, namely, providing access to computer databases for the distribution of data, internet services provider services; data transmission and reception services via telecommunication means, electronic data interchange services; electronic transmission services; provision of telecommunications access and links to computer databases and the internet; electronic transmission of news, information, message or images, providing access to news databases over the internet and other computer networks; communication via analogue and digital computer terminals, provision of access to data or documents stored electronically in central files for remote consultation, electronic data interchange services, data communications services, telephone messaging services, news agencies, namely, the transmission of news items to news reporting organizations; radio and television broadcasting services, satellite transmission services, transmission of telegrams, transmission of data in the nature of telephone and facsimile numbers and addresses by electronic telecommunications, rental of telecommunications equipment, namely, modems; cable television broadcasting services
Grape Technology Group, Inc.
(Delaware Corp.)
[e.] The U.S. Patent and Trademark Office accepts and acknowledges that Complainants’ 118 118® mark is an inherently distinctive trademark, evidenced by the registration of the mark on the Principal Register without a claim of acquired distinctiveness. (See the above-references trademark registration.)
[f.] Complainants also own U.K. and CTM trademark registrations for the 118 118® mark.
[g.] Complainants specifically own U.K. and CTM trademark registrations for the 118 118 MONEY service mark, as follows:
3023927
(February 7, 2014)
United Kingdom
(Int'l Class: 35)
Advertising services relating to financial services, financial marketing, marketing and promotional marketing; business to business marketing services concerning the provision of short term and medium term lending programs; business to consumer marketing services concerning the provision of short term and medium term lending programs; information and advisory services relating to all of the aforementioned services, including those provided on-line, by phone, or via mobile communications devices.
(Int'l Class: 36)
Financial services; financial services provided over the Internet or via mobile communication devices; financial services relating to the provision of secured and unsecured loans; financial brokerage; credit brokerage; monetary affairs; arranging of loans; financial research; loan finance services; cheque cashing and cashing of pay cheques; money lending; arrangement of instalment loans; short term loans; medium term loans; insurance services; financial overdraft protection; lease purchase financing; banking services; mortgages and mortgage brokering; electronic funds transfer; credit and debit card services including issuing credit and debit cards; consulting services concerning the provision of short and medium term lending programs; information and advisory services relating to all of the aforementioned services, including those provided on-line, by phone, or via mobile communications devices. The Number UK Limited
Cardiff, United Kingdom
118118 MONEY
012179107
(February 19, 2014)
Community
Registered
(Int'l Class: 35)
Advertising services relating to financial services, financial marketing, marketing and promotional marketing; business to business marketing services concerning the provision of short term and medium term lending programs; business to consumer marketing services concerning the provision of short term and medium term lending programs; information and advisory services relating to all of the aforementioned services, including those provided on-line, by phone, or via mobile communications devices.
(Int'l Class: 36)
Financial services; financial services provided over the Internet or via mobile communication devices; financial services relating to the provision of secured and unsecured loans; financial brokerage; credit brokerage; monetary affairs; arranging of loans; financial research; loan finance services; cheque cashing and cashing of pay cheques; money lending; arrangement of instalment loans; short term loans; medium term loans; insurance services; financial overdraft protection; lease purchase financing; banking services; mortgages and mortgage brokering; electronic funds transfer; credit and debit card services including issuing credit and debit cards; consulting services concerning the provision of short and medium term lending programs; information and advisory services relating to all of the aforementioned services, including those provided on-line, by phone, or via mobile communications devices. The Number UK Limited
Cardiff, United Kingdom
[h.] In addition to the above-referenced US, U.K. and CTM trademark registrations, Complainants own domain name registrations for 118118.COM and 118118MONEY.COM.
FACTUAL AND LEGAL GROUNDS
Pursuant to ICANN Rule 3(b)(ix), this Complaint is based on the following factual and legal grounds:
[a.] Identical and/or Confusingly Similar
[i.] Complainants have established rights in the 118 118® mark and name and the 118 118 MONEY mark and name through long and continuous and widespread use of the marks in the international marketplace, as well as through US, UK and CTM registrations of the marks. The Disputed Domain was registered on August 6, 2014, which was approximately eleven years after Complainants’ rights in the 118 118 ® mark had first been established in 2003, approximately ten years after Complainants registered the domain 118118.COM, and one and a half years after Complainants registered the domain 118118MONEY.COM and launched its 118 118 MONEY services.
[ii.] The Disputed Domain is identical to Complainants’ registered 118 118 MONEY mark and name. The Disputed Domain is confusingly similar and legally identical to the 118 118® Marks and name because Respondent’s Disputed Domain incorporates Complainants’ 118 118 mark together with the generic word “MONEY.”
[iii.] The Respondent’s Domain Name entirely incorporates the Complainants’ famous 118 118 mark including the generic word “MONEY.” Respondent’s Domain Name, in its entirety, identifies Complainants’ services, and consumers who view the Domain Name are likely to associate it with Complainants, Complainants’ 118 118 ® mark, and Complainants’ services. See Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see National Cable Satellite Corporation v. Telmex Management Services, FA 102820 (Nat. Arb. Forum Feb. 4, 2002) (“The addition of generic words, terms, or suffixes to a trademark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity”); see Pacific Cycle, LLC v. Chen Huang, FA 0410000340603 (Nat. Arb. Forum Nov. 29, 2004) (the schwinnscooter.com domain name registered by Respondent is confusingly similar to Complainant’s SCHWINN trademark because the domain name incorporates Complainant’s mark, adding only the generic or descriptive term “scooter.”)
[iv.] The addition of the generic top-level domain “.NET,” also does not distinguish Respondent’s Disputed Domain from Complainants’ 118 118 mark or 118118MONEY mark. See Travelocity.com LP v. Thomas Lefleur c/o n/a, FA0911001296087 (Nat. Arb. Forum January 11, 2010) (“Similarly, the addition of a gTLD does not reduce the likelihood of confusion between the resulting domain name and the mark, because every domain name must contain a top-level domain.”); see also Choice Logistics, Inc. v. Whois Agent c/o Privacy Protection Service, FA 1543744 (Nat. Arb. Forum April 2, 2014) (“Respondent’s inclusion of a hyphen and the “.com” gTLD does not distinguish Respondent’s domain name from Complainant’s mark.)”
[v.] Not only is the Disputed Domain confusingly similar to the 118 118 ® mark and name but the Complainants had already registered their own 118118MONEY variation as a service mark in Europe and launched a website offering lending services under 118118MONEY.COM before the Disputed Domain was registered.
[b.] Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in the Disputed Domain:
[i.] There is no indication that Respondent is commonly known by the Disputed Domain. Respondent’s WHOIS record for the Disputed Domain lists the registrant for the Disputed Domain as “Private Registration.” Nothing therein suggests or implies that Respondent is commonly known by the name “118 118.” A respondent does not have rights in a disputed domain name when it is not commonly known by that name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001); see also Wells Fargo & Co. v. Onlyne Corp. Services, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003); see also Angela C. Watson v. ZJ, FA 624501 (Nat. Arb. Forum Feb. 24, 2006); see also Herbalife Int’l of America, Inc. v. Marc Larsen, FA 766735 (Nat. Arb. Forum Sept. 5, 2006); see also Vin Diesel v. LMN a/k/a L.M. Nordell, FA 804924 (Nat. Arb. Forum Nov. 7, 2006); see also Science Apps. Int’l Corp. v. Int’l Names Ltd., FA 868891 (Nat. Arb. Forum Jan. 29, 2007).
[ii.] Respondent is not currently engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Disputed Domain. At this time, Respondent has merely parked the domain name. To the contrary, Complainants are and have been offering services in association with their 118118 and 118118MONEY marks since before Respondent registered the Disputed Domain. This kind of usage is equivalent to domain parking. It is well established by prior panel decisions that such type of use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under ICANN Policy. See e.g. Univision Communications Inc. v. mga enterprises limited, FA1007001336097 (Nat. Arb. Forum Sept. 6, 2010).
[iii.] Moreover, Respondent or Respondent’s agent previously used the Disputed Domain in connection with a website offering services that directly competed with Complainants’ services. The Disputed Domain name originally resolved to a website for MyPayday LoanCash, which bore the names Sunny.co.uk and D&D Marketing Inc. (entities not associated with or identified in the Disputed Domain registration). On September 17, 2014, Complainants sent a cease and desist letter through their UK counsel to the entities identified in the website, which resulted in the takedown of the website, presumably by the Respondent. Counsel directed subsequent requests for transfer of the domain name through the Privacy Service identified in the registration of the Disputed Domain. However, Respondent has refused to relinquish the domain name despite repeated requests to do so.
[iv.] Complainants have never authorized Respondent to register or use Complainants’ 118 118 ® mark or the 118 118 name or the 118 118 MONEY mark or the 118 118 MONEY name as part of any domain name or in connection with any websites or the offering of any services. There is no affiliation, connection, or association between Respondent and Complainants.
[v.] As stated above, Respondent’s Disputed Domain was registered approximately eleven years after Complainants’ rights in the 118 118® mark had been established. In addition, Complainants’ 118 118® mark and the 118 118 name had already become widely known internationally before Respondent registered the Disputed Domain. Moreover, Respondent’s Disputed Domain was registered approximately six months after Complainants’ U.K. trademark registration for 118118MONEY registered.
[vi.] Respondent cannot claim to have rights or legitimate interests in the Disputed Domain because Respondent has actual and constructive notice that its domain is confusingly similar to Complainants’ marks and because Respondent is and has been using the domain in bad faith, for the reasons set forth in Section (c) below. See N.C.P. Marketing Group, Inc. v. Entredomains, Case No. D2000-0387)(WIPO Jul. 5, 2000) (“Bad faith registration and use of domains does not establish rights or legitimate interests in the names”).
[c.] Registration and Use in Bad Faith
[i.] As noted above, Respondent or its agent was previously using the Disputed Domain, which is confusingly similar to Complainants’ well-known and registered 118 118® mark and the 118 118 name and identical to Complainants’ 118118MONEY mark and name, to direct Internet users to its infringing website. Respondent’s past conduct constitutes trademark counterfeiting, trademark infringement, cybersquatting and consumer fraud.
[ii.] By registering and using a domain name confusingly similar to Complainants’ registered 118 118 ® mark and name and registered 118118 MONEY mark and name, it is clear that Respondent registered the Disputed Domain primarily for the purpose of deceiving consumers and thereby disrupting Complainants’ business. This constitutes bad faith registration and use under ICANN Policy 4(b)(iii). See EthnicGrocer.com v. Latin Grocer.com; FA0003000094384 (National Arbitration Forum July 7, 2000) (registration of slight variation of Complainants’ mark suggests Respondent registered names primarily for the purpose of disrupting Complainants’ business).
[iii]. By registering and using a domain name confusingly similar to Complainants’ registered 118 118 ® mark and name and registered 118118MONEY mark and name, Respondent intended to attract Internet users to its website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the website. This constitutes bad faith registration and use under ICANN Policy 4(b)(iv).
[iv]. Complainants’ 118 118® mark was already federally and internationally registered and had already become widely known internationally before Respondent registered the Disputed Domain. In addition, Complainants’ domain name 118118.COM was registered over ten years prior to the time Respondent registered the Disputed Domain and the domain name 118118MONEY.COM was registered over one year prior to the time Respondent registered the Disputed Domain. In addition, Complainants U.K. trademark registration for 118118MONEY registered on February 7, 2014. Respondent obviously had actual knowledge of Complainants’ mark at the time of registration of the Disputed Domain.
[v]. Respondent’s registration of a domain name that is confusingly similar to the Complainants’ trademark with actual or constructive knowledge of the Complainants’ rights in the mark is evidence that the respondent has registered and used the domain name in bad faith. See Target Brand, Inc. v. Dauren Niazov and Targetporn JSC, FA 381229 (Nat. Arb. Forum Jan. 25, 2005) (finding that respondent’s registration of <targetporn.com> with actual or constructive knowledge of the TARGET mark is evidence bad faith); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use or the mark or any confusingly similar variation thereof.”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that respondent’s registration and use of the disputed domain name was in bad faith where complainant’s BEANIE BABIES mark was famous and respondent should have been aware of it).
[vi.] Prior panel decisions have held that bad faith may be inferred from the registration of a well-known mark. See The Caravan Club v. Mrgsale, FA7000095314 (Nat. Arb. Forum Aug. 30, 2000) (“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.”). Complainants registered the 118 118® mark with the U.S. Patent and Trademark Office over three years before the Disputed Domain was registered. Moreover, the 118 118® mark and the 118 118 name were used in global commerce well before Respondent registered the Disputed Domain.
[vii.] For all of the foregoing reasons, there is no dispute that Respondent registered and used the Disputed Domain in bad faith to deceive consumers and to profit from the tremendous goodwill and value of Complainants’ marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: The Number UK Ltd. and Grape Technology Group, Inc. They are related entities owned and controlled by the same parent company, kgb, a Delaware Corporation.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants to treat them all as a single entity in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 registered 118 118 with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,031,822, registered Sept. 27, 2011). Complainant has provided directory assistance services and various informational services under the 118 118 mark since 2003. Complainant recently registered 118 118 MONEY with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 3,023,927, registered Feb. 7, 2014), which it uses to identify its financial services business, through which it offers personal loan alternatives. Complainant’s valid registrations of the 118 118 and 118 118 MONEY marks with the USPTO and UKIPO respectively, sufficiently demonstrate Complainant’s rights in these marks pursuant to Policy ¶4(a)(i). 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)); Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
Complainant claims the <118118money.net> domain name is identical to the 118 118 MONEY mark. The domain name differs from the mark by the omission of spacing and the addition of the generic top-level domain (“gTLD”) “.net.” Elimination of spacing and addition of a gTLD are minor alterations which can be discarded when determining the similarity between the disputed domain name and Complainant’s mark under Policy ¶4(a)(i). See Lucky Brand Dungarees, Inc. v. Cole, FA 363048 (Nat. Arb. Forum Dec. 28, 2004) (stating that, “[i]t is well established that neither the deletion of a space between words in a trademark nor the addition of a generic top-level domain distinguish a domain name from the trademark”). Indeed, domain name syntax prohibits spaces and requires gTLDs (or ccTLDs). The <118118money.net> domain name effectively identical to the 118 118 MONEY mark pursuant to policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name as demonstrated by the WHOIS. The WHOIS record now lists “Samuel Kearney” as registrant (it originally reflected a so-called privacy registration). There is no obvious connection between Respondent and the disputed domain name. It seems clear Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating the respondent was commonly known by the disputed domain name).
Complainant claims Respondent has not engaged in a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Respondent has merely parked the disputed domain name. The screenshot provided shows the disputed domain name does not presently resolve to an active page. The failure to make an active use of a confusingly similar domain name suggests Respondent lacks rights in the domain name (or at the very least Respondent cannot get any rights from merely registering the domain name). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).)
Respondent previously used the disputed domain name to resolve to a website for MyPayday LoanCash, which offers services competing with Complainant. This means Respondent has failed to make any bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Finally, Respondent registered the disputed domain name using a privacy service. This means Respondent does not acquire any rights to the domain name merely by registering it. Respondent has done nothing to publicly associate itself with the domain name. Therefore, Respondent has acquired no rights to the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the <118118money.net> domain name with intent to disrupt Complainant’s business in violation of Policy ¶4(b)(iii). The disputed domain name previously resolved to a competing loan provider. Given Respondent’s use of the disputed domain name to promote one of Complainant’s competitors, this is constitutes sufficient evidence of Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent has attempted to attract users to its website by creating a likelihood of confusion with Complainant, which constitutes bad faith under Policy ¶4(b)(iv). Prior panels have found evidence of bad faith where the respondent is using the confusingly similar domain name to mislead users as to the complainant’s affiliation with the disputed domain name, and the respondent likely profits from the resulting confusion. For example, in Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant. This Panel finds the situation analogous and finds bad faith registration and use pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the 118 118 marks. Due to the fame of Complainant's mark, it seems obvious Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. 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.”).
Finally, Respondent registered the disputed domain name using a privacy service. This Panel has routinely held such registrations gives rise to a rebuttable presumption of bad faith registration and use in a commercial context. Since Respondent has done nothing to rebut this presumption, the Panel finds bad faith registration and use on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <118118money.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 19, 2015
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