T-Mobile USA, Inc. dba MetroPCS v. Maddisyn Fernandes / Fernandes Privacy Holdings / Domain Admin / Whois Privacy Corp.
Claim Number: FA1710001751841
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings / Domain Admin / Whois Privacy Corp. (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <meropcs.com>, <meteropcs.com>, <metopcs.com>, <metrcopcs.com>, <metrobcs.com>, <metroopcs.com>, <metropbs.com>, <metropes.com>, <metrops.com>, <metropscs.com>, <metrospc.com>, <metrtopcs.com>, <mteropcs.com>, <mtetropcs.com>, <mtropcs.com>, <wwmetropcs.com>, <wwwmetropcs.com>, <metropcsmyaccount.com>, <metropcspay.com>, <metropcspaybill.com>, <metropcstotalprotection.com>, <metropca.com>, and <metrppcs.com>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 2, 2017; the Forum received payment on October 2, 2017.
On October 6, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <meropcs.com>, <meteropcs.com>, <metopcs.com>, <metrcopcs.com>, <metrobcs.com>, <metroopcs.com>, <metropbs.com>, <metropes.com>, <metrops.com>, <metropscs.com>, <metrospc.com>, <metrtopcs.com>, <mteropcs.com>, <mtetropcs.com>, <mtropcs.com>, <wwmetropcs.com>, <wwwmetropcs.com>, <metropcsmyaccount.com>, <metropcspay.com>, <metropcspaybill.com>, <metropcstotalprotection.com>, <metropca.com>, and <metrppcs.com domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. 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 October 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@meropcs.com, postmaster@meteropcs.com, postmaster@metopcs.com, postmaster@metrcopcs.com, postmaster@metrobcs.com, postmaster@metroopcs.com, postmaster@metropbs.com, postmaster@metropes.com, postmaster@metrops.com, postmaster@metropscs.com, postmaster@metrospc.com, postmaster@metrtopcs.com, postmaster@mteropcs.com, postmaster@mtetropcs.com, postmaster@mtropcs.com, postmaster@wwmetropcs.com, postmaster@wwwmetropcs.com, postmaster@metropcsmyaccount.com, postmaster@metropcspay.com, postmaster@metropcspaybill.com, postmaster@metropcstotalprotection.com, postmaster@metropca.com, postmaster@metrppcs.com. Also on October 10, 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 October 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in MetroPCS and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent did not submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides prepaid wireless communication services by reference to the trademark MetroPCS;
2. Complainant owns United States Patent & Trademark Office (“USPTO”) Reg. No. 2,784,778, registered November 18, 2003 for the mark MetroPCS;
3. the disputed domain names <meropcs.com> and <metrops.com> were registered on December 13, 2003, <meteropcs.com> on February 16, 2004, <metopcs.com> on December 27, 2003, <metrcopcs.com> on September 27, 2004, <metrobcs.com> on September 7, 2007, <metroopcs.com> on May 24, 2005, <metropbs.com> on February 3, 2008, <metropes.com> on August 30, 2005, <metropscs.com> on June 18, 2007, <metrospc.com> on May 16, 2005, <metrtopcs.com> on July 7, 2005, <mteropcs.com> on April 23, 2004, <mtetropcs.com> on January 12, 2007, <mtropcs.com> on January 26, 2004, <wwmetropcs.com> on June 15, 2006, <wwwmetropcs.com> on November 7, 2011, <metropcsmyaccount.com> on November 28, 2006, <metropcspay.com> on April 29, 2011, <metropcspaybill.com> on March 12, 2010, <metropcstotalprotection.com> on April 4, 2012, <metropca.com> on September 28, 2004, and <metrppcs.com> on June 5, 2005;
4. the disputed domain names resolve to websites that are unrelated to Complainant, attempt to phish for personal information or install malware on users’ computers; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The publicly listed WHOIS data identifies the disputed domain names as owned by different registrants. The <metrospc.com> and <metropcspaybill.com> domain names are registered to “Domain Admin/ Whois Privacy Corp.” The remaining disputed domain names are registered to “Maddisyn Fernandes / Fernandes Privacy Holdings”.
Rule 3(c) can be satisfied if there is evidence demonstrating that in all likelihood the domain names are in effect controlled by a single person or entity. Complainant asserts that all of the disputed domain names are owned by one person, Maddisyn Fernandes. The Panel finds little to support that claim. The domain name <metrospc.com> was created on May 16, 2005 and <metropcspaybill.com> was created on March 12, 2010, almost five years later. They are not registered with the same Registrar as each other. The commonality these names share with three of the remaining 21 domain names is that they are parked with Sedo. There is nothing to link them with the other disputed names. The Panel finds that Complainant has not sufficiently demonstrated the likelihood of joint control and under Supplemental Rule 4(f)(ii) it is required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen respondent. Accordingly, the Panel dismisses the Complaint as against the domain names <metrospc.com> and <metropcspaybill.com>.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant has provided evidence of its USPTO registration and so has established trademark rights.
Complainant submits that the disputed domain names are confusingly similar to its trademark since they take the trademark and merely add generic terms and the gTLD “.com.”
The domain names all include the trademark or obvious misspellings of the trademark. The Panel accepts that for the purposes of comparison the gTLD can be disregarded. Otherwise, the added matter, for example, “www” or “myaccount” or “pay” or “totalprotection” is wholly non-distinctive. The Panel finds the trademark to be the dominant and distinctive part of the domain name in each case and so finds all of the disputed domain names to be confusingly similar to the trademark. [i]
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant must make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[ii]
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no other evidence of how Respondent might be commonly known. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. Paragraph 4(c)(i) does not apply.
The domain names have not been used in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names either redirect Internet users to unrelated websites, some of which seen to contain spyware, or attempt to phish for information via online surveys.[iii]
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or a legitimate interest in any of the disputed domain names. Accordingly, the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on the requirement of registration and use in bad faith is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The domain names have already been found to be confusingly similar to the trademark. The use is likely to be for commercial gain in some form or another. The registration of 23 names incorporating the trademark or some machination of the trademark shows that Respondent has directly targeted Respondent. All the elements of paragraph 4(b)(iv) are met.
Complainant has satisfied the third and final element of the Policy.
For reasons already given the Panel dismisses the Complaint as against the domain names <metrospc.com> and <metropcspaybill.com> which are to REMAIN WITH Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of all the other disputed domain names. Accordingly, it is Ordered that the <meropcs.com>, <meteropcs.com>, <metopcs.com>, <metrcopcs.com>, <metrobcs.com>, <metroopcs.com>, <metropbs.com>, <metropes.com>, <metrops.com>, <metropscs.com>, <metrtopcs.com>, <mteropcs.com>, <mtetropcs.com>, <mtropcs.com>, <wwmetropcs.com>, <wwwmetropcs.com>, <metropcsmyaccount.com>, <metropcspay.com>, <metropcstotalprotection.com>, <metropca.com> and <metrppcs.com domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 14, 2017
[i] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), finding that the elimination of spaces between terms does not generally create a new distinctive term; see Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (FORUM July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (FORUM Mar. 14, 2017) (“… addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”).
[ii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
[iii] See, for example, Vance Int’l, Inc. v. Abend, FA 970871 (FORUM June 8, 2007) finding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees; see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (FORUM Dec. 3, 2007) finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page; see finally Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (FORUM Nov. 20, 2009) finding that respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users).
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