Twitter, Inc. v. nono
Claim Number: FA1807001798952
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas. Respondent is nono (“Respondent”), Kiribati.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twittergifts.com>, registered with Alpnames Limited.
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 July 27, 2018; the Forum received payment on July 27, 2018.
On August 3, 2018, Alpnames Limited confirmed by e-mail to the Forum that the <twittergifts.com> domain name is registered with Alpnames Limited and that Respondent is the current registrant of the name. Alpnames Limited has verified that Respondent is bound by the Alpnames Limited 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 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@twittergifts.com. Also on August 6, 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 August 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown 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, Twitter, Inc., operates a platform for a real-time global information network with, as of March 2018, more than 300 million monthly active users. Complainant has rights in the TWITTER mark based upon UDRP precedent, and its multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,619,911 registered May 12, 2009). See Compl. Ex. C. Respondent’s <twittergifts.com> domain name is confusingly similar to Complainant’s TWITTER mark, as the domain name incorporates the mark in its entirety, adding only the generic term “gifts” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <twittergifts.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the TWITTER mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the name is used to promote a survey/reward scheme purportedly featuring “free” gift cards for various companies including Complainant’s competitors. See Compl. Ex. D.
Respondent registered and is using the <twittergifts.com> domain name in bad faith. Respondent registered and used the <twittergifts.com> domain name as part of a pattern of registrations targeting social media brands. Additionally, Respondent’s scheme amounts to an attempt to commercially benefit unfairly from the goodwill associated with Complainant’s mark and disrupt Complainant’s business. Further, due to the fame of Complainant’s TWITTER mark, Respondent clearly registered the domain name with actual knowledge of Complainant and its rights at the time it registered and subsequently used the name. Finally, the WHOIS information provided by Respondent in registering the domain name is false or incomplete.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a platform for a real-time global information network.
2. Complainant has established its trademark rights to the TWITTER mark by registration of the same with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,619,911, registered May 12, 2009).
3. Respondent registered the disputed domain name on April 28, 2018.
4. Respondent has used the domain name to promote a survey/reward scheme purportedly featuring “free” gift cards for various companies including Complainant’s competitors.
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 question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the TWITTER mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,619,911, registered May 12, 2009). See Compl. Ex. C. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See 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). Complainant also claims multiple UDRP panels have previously found Complainant to have rights to the TWITTER mark under the Policy. See, e.g., Twitter, Inc. v. Yin FA 1587007 (Forum Dec. 4, 2014); Twitter, Inc. v. Ozkan, D2014-0469 (WIPO June 15, 2014). The Panel therefore holds that Complainant’s registration of the TWITTER mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TWITTER mark. Complainant argues Respondent’s <twittergifts.com> domain name is confusingly similar to the TWITTER mark, as the name incorporates the mark in its entirety, adding only the generic term “gifts” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that the <twittergifts.com> domain name is confusingly similar to the TWITTER mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 TWITTER trademark and to use it in its domain name, adding only the generic word “gifts” which does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <twittergifts.com> domain name on April 28, 2018;
(c) Respondent has used the domain name to promote a survey/reward scheme purportedly featuring “free” gift cards for various companies including Complainant’s competitors;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <twittergifts.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TWITTER mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “nono / nono” (see Compl. Ex. A) and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <twittergifts.com> domain name;
(f) Complainant further argues Respondent’s lack of rights or legitimate interests in the <twittergifts.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name is used to promote a survey/reward scheme purportedly featuring “free” gift cards for various companies including Complainant’s competitors. Use of a domain name to promote competitors of a complainant and promote survey/offer/reward schemes do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant contends the domain name resolves to a website which purports to offer gift cards for various companies, including Complainant’s competitor Facebook, in exchange for completion of purported surveys and disclosure of sensitive personal information. See Compl. Ex. D. The Panel therefore finds Respondent has not used the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 contends Respondent’s registration of the <twittergifts.com> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of the respondent’s registration of other domain names infringing on famous marks, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)); see also Bloomberg Finance L.P. v. Xiaohua Dai, FA 1454296 (Forum Aug. 22, 2012) (finding a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because the complainant submitted evidence that the respondent had previously registered domain names incorporating famous third-party marks). Complainant contends that Respondent has registered multiple domain names combining social media brands with the generic word “gifts” to promote similar survey/reward schemes, including <twittergifts.com> and <youtubegifts.us>. See Compl. Exs. A and E. The Panel therefore determines that the registration and use of the <twittergifts.com> domain name is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant argues Respondent’s use of the domain name to purport to offer gift cards for a competitor serves to disrupt Complainant’s business. Use of a domain name to promote a competitor can disrupt a complainant’s business and thus indicate bad faith per Policy ¶ 4(b)(iii). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)). Complainant argues that Respondent’s purported offer of gift cards for Facebook amounts to a promotion of a competitor which disrupts Complainant’s business. The Panel agrees and finds Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii).
Thirdly, Complainant contends that Respondent’s bad faith is indicated by its use of the <twittergifts.com> domain name to divert Internet users for commercial gain. Use of a confusingly similar domain name to divert and attract Internet users through the use of a survey scheme can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv), as can the use of the domain name to host advertisements. See Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1505001617710 (Forum June 12, 2015) (“Here, the Panel agrees that Internet users’ completion of the fields included on the resolving site in question is equivalent to a survey, and conjures a similar presumed reward/payoff in the minds of misled Internet users and therefore is an indication of Policy ¶ 4(b)(iv) bad faith.”); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s contention that that the domain name resolves to a website which purports to offer gift cards in exchange for completion of surveys and provision of personal information. See Compl. Ex. D. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Fourthly, Complainant contends that in light of the fame and notoriety of Complainant's TWITTER mark, it is inconceivable that Respondent could have registered the <twittergifts.com> domain name without actual knowledge of Complainant's rights in the mark. Arguments of bad faith based on constructive notice are generally not persuasive because UDRP decisions decline 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."). The Panel agrees with Complainant, 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 Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Fifthly, Complainant contends Respondent has provided false contact information in connection with the registration of the <twittergifts.com> domain name. Use of false contact information in registering a domain name can be evidence of bad faith registration per Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Complainant argues that Respondent registered the domain name, providing “nono” as the only information as the registrant name, street, and city is on its face false or incomplete. See Compl. Ex. A. The Panel agrees and finds Respondent’s registration of the domain name with false contact information is evidence of its bad faith per Policy ¶ 4(a)(iii).
Finally, 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 TWITTER mark and in view of the conduct that Respondent has engaged in when using the disputed 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 <twittergifts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown
Panelist
Dated: August 30, 2018
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