Source Media, LLC v. Alex Pachan
Claim Number: FA1802001770025
Complainant is Source Media, LLC (“Complainant”), represented by Elizabeth A. Jaffe of Golenbock, Eiseman, Assor, Bell & Peskoe, LLP, New York, USA. Respondent is Alex Pachan (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalmortgagesnews.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 known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on February 1, 2018; the Forum received payment on February 1, 2018.
On February 27, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nationalmortgagesnews.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 February 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 19, 2018 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@nationalmortgagesnews.com. Also on February 27, 2018, 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 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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, Source Media, LLC, is a business-to-business digital marketing, subscription information and event company serving senior level professionals in the financial, technology and healthcare sectors. On or about November 8, 2004, Complainant acquired, by assignment, the NATIONAL MORTGAGE NEWS and other marks from Global Information Licensing Corporation. Complainant thus has rights in the NATIONAL MORTGAGE NEWS mark based upon the registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,151,961, registered Apr. 21, 1998). Respondent’s <nationalmortgagesnews.com> domain name (the “Domain Name”) is confusingly similar to Complainant’s NATIONAL MORTGAGE NEWS mark, as it consists entirely of the mark, plus an added letter “s” after the word “mortgage” in the mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent has kept its identity masked and does not appear to be operating an actual business under the Domain Name. Respondent does not use the Domain Name in connection with a bona fide offering of goods or services, but instead uses it for a web site offering click-through links to products and services unrelated to Complainant.
Respondent registered and is using the Domain Name in bad faith. His use of it to host click-through links shows bad faith. Also, that use may dilute and harm Complainant’s rights in the NATIONAL MORTGAGE NEWS mark by creating confusion among Internet users as to the endorsement or sponsorship of the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 will 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 Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant’s rights in its NATIONAL MORTGAGE NEWS mark are based upon the registration of the mark with the USPTO, Registration No. 1,151,961 on April 21, 1998, and Registration No. 1,651,229 on July 16, 1991. See Complaint Exhibit 3. These registrations were obtained by other entities but were duly assigned to Complainant. See, Complaint Exhibit 4. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel finds that Complainant’s ownership of the registrations for the NATIONAL MORTGAGE NEWS mark with the USPTO are sufficient to establish its rights in that mark under Policy ¶ 4(a)(i).
Further, Respondent’s Domain Name is confusingly similar to the NATIONAL MORTGAGE NEWS mark, as it incorporates the mark in its entirety, merely adding an “s” to the word “mortgage” in the Domain Name and the “.com” generic top-level domain. None of these changes is sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”), Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the NATIONAL MORTGAGE NEWS mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because the web site resolving from it simply redirects visitors to other web sites, presumably for pay-per click revenues, and this cannot constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the Domain Name. This allegation is supported by competent evidence. Complainant did not submit a screen shot of Respondent’s web site but did submit a Declaration by Elizabeth Jaffe, counsel for Complainant, in which she states under penalty of perjury that she attempted to locate the Respondent by Internet search, finding only the Respondent’s web site and no evidence that he was or is conducting any kind of business under the Domain Name except for the web site. Ms. Jaffe drafted the Complaint, which states that Respondent’s website displays links which divert visitors to other websites which are not associated with Complainant or its services. See, Complaint Exhibit 1. UDRP Panels have found that leading consumers, who are searching for a particular business to third-party sites, is not a bona fide use. Health Level Seven International, Inc. v. McCarragher, Claim No. FA 1723981 (Forum 2017) (“Respondent’s domain name resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain. The Panel therefore finds that Respondent has failed to use <hl7community.org> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”); Homer, TLC Inc. v. Lorna Kang, Claim No. FA573872 (Forum 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Respondent’s use of the Domain Name as demonstrated by the evidence discussed above in connection with the rights and legitimate interests analysis also supports a finding of bad faith. It is clear from that evidence that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's NATIONAL MORTGAGE NEWS mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent is obtaining commercial gain from its use of the Domain Name and its resolving web site. When a visitor to this web site clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to its web site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Id. The respondent’s website offered pay-per-click links to hunting equipment and related items. Id. The Panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its Domain Name results from pay-per-click links and by itself constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Name and its web site results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for himself and the various website owners who are forwarded from the links at the Domain Name. There is no other rational explanation for Respondent having registered and maintained the Domain Name and resolving it to a pay-per-click site with commercial links. Respondent’s use of the Domain Name is commercial because the various companies forwarded from the website benefit from the subsequent interest and purchases of those who visit the site. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Using a Domain Name that trades upon the goodwill of a complainant for commercial gain is manifest evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalmortgagesnews.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
March 23, 2018
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