R.R. Donnelley & Sons Company v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1702001716422
Complainant is R.R. Donnelley & Sons Company (“Complainant”), represented by Meaghan H. Kent of Venable LLP, United States. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insiderrd.net>, registered with Internet Domain Service 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2017; the Forum received payment on February 7, 2017.
On Feb 10, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <insiderrd.net> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service 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 February 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2017 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@insiderrd.net. Also on February 13, 2017, 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 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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) Complainant registered the RRD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,706,196, registered Mar. 24, 2015). Alternatively, Complainant has established common law rights in the RRD mark through its launch of the RRD ticker symbol in 1998 and its registration of its own domain names <rrd.net> (reg. July 16, 1997) and <inside.rrd.net> (reg. 2004). Respondent’s <insiderrd.net> domain is confusingly similar as it merely adds the generic or descriptive term “inside” before the entire RRD mark the generic top-level domain “.net” (“gTLD”).
ii) Respondent has no rights or legitimate interests in <insiderrd.net>. Respondent is not commonly known by the RRD mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name. Respondent also doesn’t use the disputed domain for any bona fide offering of goods or services because the domain name redirects the user to a different webpage, <pc-virus-p5.pw>, that installs a virus or malware onto the user’s computer.
iii) Respondent registered and uses the <insiderrd.net> in bad faith. The disputed domain name disrupts the business of Complainant by redirecting users seeking Complainant to a webpage that installs a virus or malware onto the user’s computer. Respondent also must have had actual knowledge of Complainant’s mark because the common law recognition of the RRD mark has a strong reputation worldwide.
B. Respondent
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent first registered <insiderrd.net> on Dec. 12, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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(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 (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 was founded in 1864, and provides print, digital, translation, and other related services. Complainant conducts business in countries all over the world. Complainant claims it registered the RRD mark with the USPTO (e.g., Reg. No. 4,706,196, registered Mar. 24, 2015). Panels have consistently held that registration of a mark with the USPTO sufficiently establishes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Further, where a registered mark exists, the relevant date of rights in the mark is the filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Therefore, the Panel sees that Complainant has established rights in the RRD mark for the purposes of Policy ¶ 4(a)(i) dating back to Dec. 13, 2012.
Alternatively, Complainant asserts that it also has rights established at common law based on its use of the mark prior to registration. Panels have recognized common law rights as establishing sufficient rights in a mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Complainant claims that it has established common law rights in the RRD mark through its launch of the RRD ticker symbol in 1998 and its registration of its own domain names <rrd.net> (reg. July 16, 1997) and <inside.rrd.net> (reg. 2004). The Panel finds that Complainant has established common law rights in the RRD mark through its launch of the RRD ticker symbol in 1998 and its continued use thereafter.
Next, Complainant argues that Respondent’s <insiderrd.net> is confusingly similar as it adds a generic or descriptive term and the gTLD “.net”. Past Panels have found these changes to not sufficiently distinguish a mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Similarly, Panels have held that adding the gTLD “.com” does not constitute a sufficient difference. See Verragio, LTD. v. Lance Liao, FA 1445159 (Forum July 5, 2012) (“Respondent’s <verragio.net> domain name is identical to Complainant’s VERRAGIO mark, since Respondent has merely added the generic top-level domain (“gTLD”) ‘.net.’”). Respondent added the term “inside” before the RRD mark along with the gTLD “.net”. Further, Complainant registered the domain name <inside.rrd.net>, and the disputed domain only omits the period in between the words “inside” and “rrd”. Therefore, the Panel agrees that Respondent has not included elements in the domain name that would provide sufficient distinction from Complainant’s mark under Policy ¶ 4(a)(i).
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 (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 (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 contends that Respondent has no rights or legitimate interests in <insiderrd.net>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Maddisyn Fernandes” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the RRD mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by <insiderrd.net> under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent’s actions do not constitute a bona fide offering of goods or services as the disputed domain redirects users to a different webpage that puts a virus or malware on the users’ computer. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). The disputed domain redirects the user to the webpage <pc-virus-p5.pw> that presumably installs a virus or malware onto the user’s computer. The Panel agrees that Respondent does not use the disputed domain for a bona fide offering of goods or services.
Complainant first contends that Respondent using the disputed domain name disrupts the business of Complainant by redirecting users seeking Complainant to a webpage that installs a virus or malware onto the user’s computer. Prior Panels have found that redirecting users and installing malware onto their computer can evince bad faith. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum March 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant, as mentioned earlier, offers that the disputed domain name redirects users to the domain <pc-virus-p5.pw>. Thus, the Panel finds that Respondent uses the domain in bad faith.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, Panels have disregarded arguments of bad faith registration based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Complainant contends that Respondent must have had actual knowledge of the RRD mark because it has a strong and a worldwide presence. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). As the Panel agrees with Complainant that it has established common law rights and had strong recognition worldwide, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insiderrd.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 20, 2017
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