Blackhawk Network, Inc. v. cc
Claim Number: FA1508001633237
Complainant is Blackhawk Network, Inc. (“Complainant”), represented by Caitlin R. Brandon, Indiana, United States. Respondent is cc (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <re-loadit.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2015; the Forum received payment on August 14, 2015.
On August 14, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <re-loadit.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 August 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@re-loadit.com. Also on August 17, 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 September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions
1. Complainant is a leading prepaid and payments network that supports the program management and the physical and digital distribution of a large range of prepaid products across a global network. Complainant is based in California with operations in twenty-two countries, including offices in Australia, Brazil, Canada, Mexico, and the United Kingdom.
2. Complainant has registered the RELOADIT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,970,807, registered May 31, 2011), which demonstrates its rights in the mark. The Panel is directed to Attached Exhibit B for copies of Complainants USPTO registrations. Respondent’s <re-loadit.com> domain name is confusingly similar to Complainant’s mark as it merely adds a single hyphen.
3. Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent has no authorization or license to use the RELOADIT mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent is impersonating Complainant and directing Complainant’s customers to Respondent’s fraudulent websites available through the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith. Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s mark, thereby engaging in conduct proscribed by Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is is a leading prepaid and payments network that supports the program management and the physical and digital distribution of a large range of prepaid products across a global network.
2. Complainant has registered the RELOADIT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,970,807, registered May 31, 2011), which demonstrates its rights in the mark.
3. Respondent registered the disputed domain name on March 2, 2015.
4. Respondent has used the disputed domain name to impersonate Complainant and direct Complainant’s customers to Respondent’s fraudulent websites available through the disputed domain name.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is a leading prepaid and payments network that supports the program management and the physical and digital distribution of a large range of prepaid products across a global network. Complainant is based in California with operations in twenty-two countries, including offices in Australia, Brazil, Canada, Mexico, and the United Kingdom. Complainant has registered the RELOADIT mark with the USPTO (e.g., Reg. No. 3,970,807, registered May 31, 2011). The Panel notes in that regard Attached Exhibit B for copies of Complainant's USPTO registrations and accepts that evidence. Complainant argues that its USPTO registrations demonstrate its rights in the RELOADIT mark. The Panel concludes that a trademark registration with the USPTO suffices to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in the RELOADIT mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RELOADIT mark. Complainant argues that Respondent’s <re-loadit.com> domain name is confusingly similar to Complainant’s mark as it merely adds a single hyphen. The Panel notes that the disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com.” Past panels have found that the addition of a hyphen to a complainant’s mark does not differentiate a respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Additionally, past panels have commonly held that the addition of the gTLD “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. See 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.”). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s RELOADIT mark and to use it in its domain name which is confusingly similar to the mark;
(b) Respondent registered the disputed domain name on March 2, 2015;
(c) Respondent has used the disputed domain name to impersonate Complainant and direct Complainant’s customers to Respondent’s fraudulent websites available through the disputed domain name;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no authorization or license to use the RELOADIT mark. The Panel notes that the WHOIS information merely lists “cc” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. In that regard the Panel notes Attached Exhibit E for additional WHOIS information. Accordingly, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f) Complainant contends that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Complainant alleges that Respondent is impersonating Complainant and directing Complainant’s customers to Respondent’s fraudulent websites available through the disputed domain name. Further, Complainant argues that Respondent has copied Complainant’s website and is using the disputed domain name to deceive Complainant’s customers into divulging sensitive financial information to Respondent, sufficient for Respondent to transfer the customers’ funds into Respondent’s control. Past panels have defined this behavior as “phishing” and have concluded that a respondent’s use of a disputed domain name to deceive Internet users to provide their personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). As such, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent had actual knowledge of Complainant’s mark pursuant to Policy ¶ 4(a)(iii). Specifically, Complainant contends that the nature of Respondent’s fraudulent activity in copying Complainant’s website to steal customers’ funds inherently demonstrates that Respondent registered the disputed domain name for the purpose of perpetuating fraud; Complainant also argues that the nature of Respondent’s fraudulent activity demonstrates Respondent’s actual knowledge of Complainant’s mark. Past panels have found bad faith where a respondent used a domain name to acquire the personal information of a complainant’s customers fraudulently. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). As such, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <re-loadit.com> domain name using the RELOADIT mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <re-loadit.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 14, 2015
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