TechSoup Global v. emre delioglu
Claim Number: FA1712001761759
Complainant is TechSoup Global (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is emre delioglu (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techsouplogin.store>, registered with Hostinger, UAB.
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 December 7, 2017; the Forum received payment on December 7, 2017.
On December 8, 2017, Hostinger, UAB confirmed by e-mail to the Forum that the <techsouplogin.store> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 December 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@techsouplogin.store. Also on December 8, 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 January 2, 2018 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.
Complainant has used the TECHSOUP mark in United States commerce in connection with an online computer database providing computer technology assistance to nonprofit organizations. Since 2000, Complainant has grown to become an international network of 65 NGOs serving over 236 countries and territories. Complainant registered the TECHSOUP mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,500,935, registered Oct. 23, 2001). See Compl. Ex. 7. Respondent’s <techsouplogin.store> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds the descriptive or non-distinct term “login” and the generic top-level domain (“gTLD”) “.store.”
Respondent has no rights or legitimate interests in the <techsouplogin.store> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to a website that attempts to pass off as Complainant and purports to offer competing technical support and resources under Complainant’s TECHSOUP mark. See Compl. Ex. 8.
Respondent registered and uses the <techsouplogin.store> domain name in bad faith. Respondent registered the disputed domain name to confuse Internet users seeking Complainant’s services to offer competing services for its own commercial gain. See Compl. Ex. 8. Further, given the fame and unique qualities of the TECHSOUP mark, it is unlikely that Respondent registered the domain name without knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States technology company engaged in the provision of an online computer database providing computer technology assistance to nonprofit organizations.
2. Complainant has established its trademark rights in the TECHSOUP mark by registering the same with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,500,935, registered Oct. 23, 2001).
3. Respondent registered the <techsouplogin.store> domain name on October 30, 2017.
4. Respondent uses the domain name to redirect users to a website that attempts to pass itself off as Complainant and purports to offer competing technical support and resources under Complainant’s TECHSOUP mark.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it registered the TECHSOUP mark with the USPTO (e.g. Reg. No. 2,500,935, registered Oct. 23, 2001). See Compl. Ex. 7. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the TECHSOUP mark for the purposes of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TECHSOUP mark. Complainant argues that Respondent’s <techsouplogin.store> domain name is confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds the descriptive or non-distinct term “login” and the gTLD “.store.” Similar changes in a registered mark have failed to distinguish sufficiently a domain name for the purposes of Policy ¶4 (a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <techsouplogin.store> domain name is confusingly similar to the TECHSOUP mark under 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 (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.”).
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 TECHSOUP mark and to use it in its domain name, adding the descriptive or non-distinct term “login”;
(b) Respondent registered the <techsouplogin.store> domain name on October 30, 2017;
(c) Respondent uses the domain name to redirect users to a website that attempts to pass itself off as Complainant and purports to offer competing technical support and resources under Complainant’s TECHSOUP mark;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <techsouplogin.store> domain name. 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 “emre delioglu / emre delioglu” as the registrant. See Compl. Ex. 4. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the TECHSOUP mark. Panels may use this evidence to show a lack of 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 domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <techsouplogin.store> domain name under Policy ¶ 4(c)(ii);
(f) Complainant next argues that Respondent uses the domain name to redirect users to a website that attempts to pass itself off as Complainant and purports to offer competing technical support and resources under Complainant’s TECHSOUP mark. Passing off as a complainant to offer competing goods or services can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Complainant provides screenshots of the resolving webpage for the infringing domain name, which displays the TECHSOUP mark and does appear to offer technical support services which would compete with Complainant. See Compl. Ex. 8. As such, the Panel finds that Respondent attempts to pass off as Complainant to offer competing technical support services, failing to use the <techsouplogin.store> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per 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 argues that Respondent registered the disputed domain name to confuse Internet users seeking Complainant’s services to offer competing services for its own commercial gain. Using a disputed domain name to trade upon the goodwill of a complainant and offer competing goods or services for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted previously, Complainant provides screenshots of the resolving webpage for the infringing domain name, which displays the TECHSOUP mark and appears to offer technical support services in competition with Complainant. See Compl. Ex. 8. Accordingly, the Panel finds that Respondent attempted to benefit commercially off Complainant’s mark and offer competing technical support services in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the TECHSOUP mark at the time of registering the <techsouplogin.store> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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). Complainant contends that, given the fame and unique qualities of the TECHSOUP mark, it is unlikely that Respondent registered the domain name without knowledge of Complainant’s rights in the mark. As the Panel agrees that Respondent did have actual knowledge of Complainant’s rights in the TECHSOUP mark at the time of registration, then the Panel uses this as further evidence of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TECHSOUP 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 <techsouplogin.store> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 3, 2018
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