Extrabux, Inc. v. boyi xiong
Claim Number: FA1604001668998
Complainant is Extrabux, Inc. (“Complainant”), represented by Brian M. Davis of VLP Law Group LLP, North Carolina, USA. Respondent is boyi xiong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <extarbux.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on April 5, 2016; the Forum received payment on April 5, 2016.
On April 6, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <extarbux.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 April 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2016 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@extarbux.com. Also on April 6, 2016, 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 April 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
I. INTRODUCTION
Complainant Extrabux, Inc. (hereinafter “Complainant”) is the owner of the service marks EXTRABUX and EXTRABUX.COM (sometimes hereafter referred to collectively as the “EXTRABUX Mark”). For several years, Complainant has utilized the EXTRABUX Mark in connection with the provision of online rebate, cash back and advertising services, and the distribution of online coupons for various third party consumer goods and services in the US, China and elsewhere. Complainant has also used the domain name ExtraBux.com to promote and offer its services. Respondent, acting in bad faith, has registered and used the domain name ExtarBux.com in an attempt to derive an improper financial benefit in the form of referral fees from Complainant. Respondent's domain name made the subject of this proceeding is confusingly similar to Complainant's EXTRABUX Mark and the ExtraBux.com domain name, and Respondent has no preexisting rights or legitimate interests in respect of said domain name. Respondent's actions fall squarely within the activity ICANN's UDRP is intended to remedy.
II. FACTUAL BACKGROUND
A. Complainant and the EXTRABUX Mark
Complainant is a California corporation, and is the owner of the service marks EXTRABUX and EXTRABUX.COM used in connection with online rebate, cash back and advertising services, and the distribution of online coupons for various third party consumer goods.
Complainant has offered its services in the United States and other countries under the EXTRABUX Mark since at least as early as 2006. Complainant has also obtained several registrations of its EXTRABUX Mark including the U.S. Registration detailed below:
Trademark: EXTRABUX
Reg. No.: 3,936,369
Filing Date: Dec. 15, 2009
Registration Date: Mar. 29,2011
Filing Basis: Section 1(a) – Use in Commerce
Goods/Services: 35 - Advertising and marketing services, namely, promoting the sale of goods and services of others; consumer services, namely, consumer comparison shopping services; providing
on-line computer databases in the field of locating products, describing products, rating products, pricing products, and comparing price and quality of products; providing online databases containing and featuring information regarding the price of consumer products from various merchants; gathering, compiling and preparing business and market research information for others; preparing business and market research reports from compiled data for others
42 - Computer services, namely, providing an online search engine for obtaining information on consumer products and associated merchants on a global computer network
First Use Date: 35 – June 6, 2006
42 – June 6, 2006
Further, Complainant owns six registrations for its EXTRABUX and EXTRABUX.COM marks in China, Respondent’s country of residence (China Reg. Nos. 11930414-19).
Complainant’s services have been and are being advertised and promoted under the EXTRABUX Mark in various forms of media. Complainant has also registered the domain name ExtraBux.com and uses this domain name to direct Internet users to its website. As an online business, that website is a vital part of Complainant’s marketing program and is used to provide the services offered under Complainant’s EXTRABUX Mark.
By reason of the adoption and longstanding continuous use of Complainant’s EXTRABUX Mark, that designation has a distinctive quality and has acquired special and particular significance and very valuable goodwill as identifying Complainant and its services, so that when members of the public in this country and elsewhere see or hear such mark and trade name, they automatically think of Complainant. Consequently, through such usage and recognition, Complainant has acquired (in addition to its statutory rights) common-law rights in the EXTRABUX Mark as a proprietary trade name, trademark and service mark, which rights extend, without limitation, to the exclusive right to use EXTRABUX in the United States and elsewhere, and the right to prevent others from using any marks, domain names, or other designations that are confusingly similar thereto.
B. Respondent’s Unlawful Activities
Respondent has provided the registrar for the subject domain name (GoDaddy.com, Inc.) with the following information: mailing address: 509B 15th building, yuyan daxue, beijing, beijing, beijing 100083 CN , Telephone: 8613120203517; Fax: NA and E-Mail: blcuxiong@gmail.com. It appears from the WhoIs record that the subject domain name was registered on October 11, 2013.
Members of the EXTRABUX program can receive payments from Complainant for referring friends to the site who subsequently become members and make qualifying purchases. Respondent was using the subject domain name as a “referral link” that automatically redirected to the Extrabux.com website. Those users accessing the Extrabux.com website through the subject domain name were unknowingly credited to an EXTRABUX referral account that is presumably owned by or affiliated with Respondent. Respondent is conducting these activities notwithstanding the fact that it has no rights or legitimate interests in respect of said domain name, and the subject domain name is confusingly similar to Complainant’s registered EXTRABUX and EXTRABUX.COM marks.
On March 23, 2016, Complainant sent a letter to Respondent requesting that he disable the domain name and transfer it to Complainant. Although Respondent did not respond to the letter, the subject domain name was subsequently disabled and does not currently resolve to an active website.
III. ARGUMENT
Pursuant to the UDRP, Complainant must establish the following to obtain the relief it requests in this action: (i) the accused domain name (ExtarBux.com) is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the accused domain name; and (iii) the accused domain name has been registered and is being used in bad faith. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i). As reflected in the accompanying evidence made of record in this proceeding and for the reasons set forth below, Complainant readily satisfies each of these requirements.
A. The Accused Domain Name Is Confusingly Similar to Complainant’s Mark
Complainant owns valid and enforceable common law rights in the EXTRABUX Mark in the United States, and elsewhere by virtue of its continuous use of such mark for several years. Further, Complainant owns valid statutory rights in the EXTRABUX Mark in the United States by virtue of its use and its registration of that mark in the United States Patent and Trademark Office (15 U.S.C. §1065).
The accused domain name is strikingly similar to Complainant’s EXTRABUX Mark. In fact, it is identical to Complainant’s mark except that it reflects a common typographical error by reversing the letters R and A in Complainant’s EXTRABUX Mark. It is well established that such domain names are confusingly similar to the underlying third-party mark despite this intentional misspelling. See American Airlines v. Discovery Names One Limited c/o Richard Irving, FA1001001302698 (Nat. Arb. Forum March 9, 2010) (americanairliens.com confusingly similar to complainant’s AMERICAN AIRLINES mark); AOL Inc. v. Merlana Global Corporation c/o Domain Administrator, FA1001001304762 (Nat. Arb. Forum March 11, 2010)(mapquesrt.com and mapquesat.com confusingly similar to MAPQUEST mark). Because Respondent registered and began using the accused domain name long after Complainant acquired rights in its mark, Complainant satisfies the first element of proof required under the UDRP.
B. Respondent Has No Rights Or Legitimate Interests In The Accused Domain Name
Respondent has no apparent preexisting rights in “EXTARBUX” as a trademark, service mark or trade name, nor is Respondent a licensee or affiliate of Complainant. Respondent is using the disputed domain name to engage in typosquatting, a practice where a confusingly similar domain name is registered with the intention of attracting Internet traffic through commonly made typographical errors. Typosquatting by itself is evidence that a respondent lacks rights and legitimate interests in a disputed domain name pursuant to Policy ¶4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the microssoft.com domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).”) Pursuant to UDRP ¶4(a)(ii), it may therefore be presumed that Respondent has no rights or legitimate interests in “ExtarBux.com” as a domain name. See Kohler Co. v. Redfire Internet Marketing / Redfire Internet Marketing f/k/a WhoisGuard Protected a/k/a WhoisGuard, FA1008001339819 (Nat. Arb. Forum September 23, 2010). UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
C. Respondent Has Registered And Is Using The Domain Name In Bad Faith
The subject domain name is being “used” inasmuch as an active website was accessible via the domain name prior to its deactivation by Respondent in response to Complainant’s letter. The evidence also indicates that Respondent did not register or begin use of the subject domain name until no earlier than October 11, 2013 – long after Complainant’s 2006 first use date of its EXTRABUX Mark and after the filing dates of the relevant EXTRABUX registrations in the US and China. Without any preexisting rights in “EXTARBUX” as a trademark, service mark, or trade name, and with full knowledge of Complainant’s rights to the EXTRABUX Mark as evidenced by Respondent’s participation in the ExtraBux.com referral program, the only plausible reason for Respondent to adopt, register, and use the subject domain name is to obtain unearned referral credits from those making a typographical error while seeking Complainant’s website. Such use of a domain name is clear evidence of bad faith registration and use pursuant to UDRP ¶4(b)(ii) and (iii). See Enterprise Holdings, Inc. v Oleg Techino c/o Oleg Techino aka David Ghou c/o David Ghou aka Lidnick Webcorp Inc c/o Lidnick Webcorp aka Orel Hlasek LLC c/o Orel Hlasek, FA1101001366013 (Nat. Arb. Forum February 18, 2011)(involving several typosquatted domain names that were similar to the ENTERPRISE mark used to link to the trademark owner’s affiliate program).
Complainant also notes that there is no conceivable future use of the subject domain name that would be non-infringing given the fact that the domain name incorporates an obvious misspelling of Complainant’s EXTRABUX Mark. Such conduct has been found, by itself, to constitute bad faith use of the domain names. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000); Neal & Massy Holdings Limited v. Massy Nealand, FA1305001498038 (Nat. Arb. Forum May 24, 2013); Clark Equipment Company v. David Sharpley / Sharpley, David, FA1308001513849 (Nat. Arb. Forum September 24, 2013) (involving the registration of bobcatequipment.com and other bobcat domain names; finding passive holding to be bad faith use as “any future use of such domain names would remain confusingly similar to the BOBCAT mark”). Such misuse of a domain name is clear evidence of bad faith registration and use pursuant to UDRP ¶4(b)(iii).
B. Respondent
Respondent failed to submit a Response 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(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 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 uses the EXTRABUX mark in its business of providing online rebates, cash back and advertising services, and distributing online coupons for various third party consumer goods. Complainant registered the EXTRABUX mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,936,369, Reg. Date March 29, 2011). A valid registration with the USPTO (or any governmental trademark authority) establishes a complainant’s rights in a mark even when the respondent does not operate in the United States. Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015). In this case, Complainant also registered its mark in China (although this Panel cannot actually read the Chinese registration submitted by Complainant). Complainant has superior rights to this mark in China (even though Complainant need not prove such facts). Complainant has sufficiently demonstrated its rights under Policy ¶ 4(a)(i) for the EXTRABUX mark.
Complainant claims Respondent’s <extarbux.com> domain name is confusingly similar to the EXTRABUX mark. The disputed domain name transposes the “a” and the “r” in the mark and adds the gTLD “.com.” First of all, the TLD (whether a gTLD or ccTLD) must be ignored under a Policy ¶ 4(a)(i) analysis because domain name syntax requires a TLD. Second, such minor misspellings do not adequately differentiate a domain name from a mark under a Policy ¶ 4(a)(i) analysis. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶4(a)(i).”); see also EarLens Corporation v. Lisa Katz / Domain Protection LLC, FA 1643578 (Nat. Arb. Forum November 28, 2015) (holding that the addition of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent’s <extarbux.com> domain name is confusingly similar to the EXTRABUX mark under 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. The WHOIS information merely lists “boyi xiong” as registrant. Respondent did not submit a response in this proceeding. There is no obvious connection between Registrant’s name and the disputed domain name. There is no available evidence to support finding Respondent is not commonly known by the disputed domain name and hold as such. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum March 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.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).”).
Complainant claims Respondent has used the disputed domain to serve as a “referral link” that automatically redirected to Complainant’s home site, <extrabux.com>. This means any Internet user which arrives at the disputed domain name is referred to Complainant’s web site and Complainant pays a referable fee to Respondent through the Extrabux.com referral program. This case is strikingly similar to Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)). This Panel agrees with the reasoning in that case. Respondent is profiting from Complainant’s affiliate program through the disputed domain, which is a mere misspelling of the EXTRABUX mark, and constitutes no (i) bona fide offering of goods or services or (ii) any legitimate noncommercial or fair use.
Once Complainant sent a cease and desist letter to Respondent, Respondent took down the web site at the domain. This essentially means (as far as the casual observer can tell) Respondent is not using the domain name. Respondent cannot acquire any rights to the domain name if Respondent isn’t using the domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent registered and used the disputed domain to get referral fees from Complainant’s referral program. Such a use constitutes bad faith pursuant to Policy ¶4(b)(iv) because Respondent is attempting to attract internet uses for commercial gain by creating a likelihood of confusion as to who owns the disputed domain name. See Deluxe Corp. v. Dallas Internet, FA 105216 (Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
Complainant claims Respondent has engaged in the practice of typosquatting by misspelling Complainant’s mark with the intent to intercept and siphon off traffic from its intended destination. The UDRP does not mention typosquatting by name and this Panel will not find bad faith solely upon a claim of typosquatting. However, the use of this domain name clearly suggests Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business. This does constitute bad faith registration and use under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant’s trademark registrations for the EXTRABUX mark existed well before the registration of the disputed domain name. Respondent had actual knowledge of Complainant's rights in the mark based upon Respondent’s use of the disputed domain name. There is no other possible explanation for Respondent’s deliberate profiting under Complainant’s referral program. That was no accident. It seems obvious Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
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 <extarbux.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 2, 2016
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