Case Metrix LLC v. Domain Admin
Claim Number: FA1708001743688
Complainant is Case Metrix LLC (“Complainant”), represented by W. Scott Creasman of Taylor English Duma LLP, Georgia, USA. Respondent is Domain Admin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <casemetrix.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2017; the Forum received payment on August 8, 2017.
On August 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <casemetrix.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 August 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@casemetrix.com. Also on August 15, 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 September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides legal research and analytics services, primarily for law firms, about the value of legal disputes based on an analysis of settlement and verdict outcomes for similar cases in the same courts.
Complainant uses its CASEMETRIX service mark to promote its business.
Complainant holds a registration for the CASEMETRIX mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,862,051, registered October 12, 2010.
Respondent registered the <casemetrix.com> domain name on or about September 28, 2012.
The domain name is substantively identical to Complainant’s mark.
There is no evidence that Respondent is commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its CASEMETRIX mark in any fashion.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to a parked webpage that displays pay-per-click hyperlinks to third-party websites, with the intent to display advertisements that compete with Complainant’s business.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has engaged in a pattern of bad faith domain name registrations by registering multiple domain names that infringe on the trademark rights of others.
The website resolving from the domain name displays a general offer to sell it.
Respondent’s use of the domain name disrupts the business of Complainant.
The domain name is used to benefit Respondent commercially by trading on the goodwill of Complainant’s CASEMETRIX mark and by creating confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with it.
Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the CASEMETRIX service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. v. Ryan G Foo, FA 1627542 (Forum August 9, 2015) (finding that a UDRP complainant had rights in its mark sufficient to satisfy the requirements of Policy ¶ 4(a)(i) by dint of its registration of the mark with the USPTO).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <casemetrix.com> domain name is substantively identical to Complainant’s CASEMETRIX service mark. The domain name contains the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of identity or confusing similarity under the standards of the Policy. See, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017):
When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), [such as] “.com”, … the Panel may find that the disputed domain name is identical to Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to or legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that there is no evidence in the record showing that Respondent has been commonly known by the <casemetrix.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its CASEMETRIX mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a UDRP respondent was not commonly known by the <chevron-europe.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information named “Fred Wallace” as the registrant of that domain name). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so could not find shelter in the provisions of Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to use its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <casemetrix.com> domain name, in that the webpage resolving from the domain name is parked and displays pay-per-click hyperlinks that serve to link Internet users to the websites of Complainant’s business competitors. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the contested domain name within the meaning of either of those provisions of the Policy. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015):
The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.
Further to the point, see also McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum January 22, 2015):
The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <casemetrix.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s use of the disputed <casemetrix.com> domain name, which we have found is substantively identical to Complainant’s CASE MATRIX service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s sponsorship of, or other association with, the domain name. Under Policy ¶ 4(b)(iv), this too stands as proof of Respondent’s bad faith in registering and using the domain name. See Vivint, Inc. v. Online Management, FA1403001549084 (Forum April 23, 2014) (finding that a respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(iv) where that domain name resolved to a parking page that featured no content other than sponsored advertisements and links).
Thus the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <casemetrix.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 13, 2017
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