Dollar Shave Club, Inc. v. Andrew Prince
Claim Number: FA1502001604130
Complainant is Dollar Shave Club, Inc. (“Complainant”), represented by Paul A. McLean of DLA Piper LLP (US), California, USA. Respondent is Andrew Prince (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dollarshaveclubreview.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2015; the Forum received payment on February 9, 2015.
On February 11, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <dollarshaveclubreview.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 February 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@dollarshaveclubreview.com. Also on February 12, 2015, 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 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant uses the DOLLAR SHAVE CLUB mark to distinguish itself as a company offering razor blade products through online services. Complainant has registered the DOLLAR SHAVE CLUB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,201,669, registered Sep. 4, 2012) as well as numerous other registries worldwide. Such registrations demonstrate Complainant’s rights in the mark.
The <dollarshaveclubreview.com> domain name is confusingly similar to Complainant’s DOLLAR SHAVE CLUB mark as it fully incorporates the mark, and simply eliminates the spacing between words, adds the descriptive term “review” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <dollarshaveclubreview.com> domain name. Respondent is not affiliated with Complainant or licensed to use its trademark.
Respondent is using the disputed domain name in bad faith. Respondent had actual or constructive knowledge of the DOLLAR SHAVE CLUB mark because of Complainant’s notoriety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DOLLAR SHAVE CLUB mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to a website the ostensibly reviews Complainant’s product and displays a link to a competitive product.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it possesses trademark rights in the DOLLAR SHAVE CLUB mark through its trademark registrations with the USPTO (e.g., Reg. No. 4,201,669, filed Jan. 16, 2012; registered Sep. 4, 2012), and other registrations worldwide. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Such registrations confer rights in the mark dating back to January 16, 2008, the date on which Complainant first filed for trademark protection with the USPTO. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Respondent’s at-issue domain name includes Complainant’s entire trademark less the spaces between its three terms, adds the descriptive term “review” and appends generic top-level domain “.com” to the resulting string. However, the ensuing differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other under Policy ¶ 4(a)(i) and therefore the Panel finds that the <dollarshaveclubreview.com> domain name is confusingly similar to Complainant’s DOLLAR SHAVE CLUB mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Although not expressly set out in the Complaint, WHOIS information for the at-issue domain name lists “Andrew Prince” as the domain name’s registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by the <dollarshaveclubreview.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, there is nothing in the record indicating that the use of the domain name was intended for any purpose other than to inappropriately trade off the goodwill associated with Complainant’s mark. Using the confusingly similar domain name to refer website visitors to a third party competitor of Complainant where it appears that Respondent might benefit from associated referral fees is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that using a domain name to promote related advertising was a commercial use that was not bona fide).
Given the forgoing and in light of the fact that Respondent fails to deny any of Complainant’s claims, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent registered the <dollarshaveclubreview.com> domain name knowing that Complainant had trademark rights in the DOLLAR SHAVE CLUB mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and as well as from the material presented on the website addressed by the at-issue domain name. Given the forgoing and without any alternative explanation by Respondent, it appears that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <dollarshaveclubreview.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dollarshaveclubreview.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 12, 2015
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