RedWeek, Inc. v. RedWeek .com
Claim Number: FA1808001804021
Complainant is RedWeek, Inc. (“Complainant”), represented by William C. Rava of Perkins Coie LLP, Washington, USA. Respondent is RedWeek.com (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redweekinc.com>, registered with Google 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2018; the Forum received payment on August 29, 2018.
On September 3, 2018, Google LLC confirmed by e-mail to the Forum that the <redweekinc.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 September 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@redweekinc.com. Also on September 7, 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 October 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, RedWeek, Inc. is a leading online timeshare marketplace. Complainant has rights in the REDWEEK mark based upon its registration of the mark with the United States Patent and Trademark Office ("USPTO”).
Respondent’s <redweekinc.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire REDWEEK mark in the domain name plus the generic term “inc” and the TLD “.com.”
Respondent lacks rights and legitimate interests in the <redweekinc.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent holds the domain name inactively and uses an email address associated with it to send fraudulent emails.
Respondent registered and uses the <redweekinc.com> domain name in bad faith. Respondent attempts to impersonate Complainant through emails in furtherance of illegal activity. Further, Respondent had actual knowledge of Complainant’s rights in the REDWEEK mark prior to registering the at-issue domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in REDWEEK as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the REDWEEK mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <redweekinc.com> domain name to host email which it uses to impersonate Complainant so that it may defraud third parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the REDWEEK trademark evidences its rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain name contains Complainant’s entire REDWEEK trademark followed by the term “inc” and the top-level domain name “.com”. The slight differences between the <redweekinc.com> domain name and Complainant’s REDWEEK trademark are insufficient to distinguish Respondent’s domain name from Complainant’s trademark for the purposes of the Policy. In fact the suggestive term “inc,” an abbreviation for “incorporated,” only serves to add to any confusion. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <redweekinc.com> domain name is confusingly similar to Complainant’s REDWEEK trademark. 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, Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Rights or Legitimate Interests
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the registrant as “RedWeek.com.” However, the record contains no corroborating evidence that tends to prove that Respondent is in fact commonly known by the <redweekinc.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).
Moreover, Respondent uses the at-issue domain name to pass itself off as Complainant in fraudulent email. In such email, Respondent poses as Complainant and informs the email’s recipients that a buyer had been found for the particular recipient’s timeshare property. The email exchanges go on to inform the potential seller that a fee is needed to complete the sale. Ultimately, Respondent asks for banking information so a transaction fee can be transferred from the duped seller to Respondent. Thousands of dollars have been fraudulently transferred to Respondent via this scam. Naturally, Respondent’s use of the at-issue domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <redweekinc.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding rights and legitimate interests, Respondent uses the confusingly similar domain name to host email which pretends to be from Complainant. Respondent then attempts to extract funds the from email recipients who mistakenly believe they are dealing with Complainant. Respondent thereby disrupts Complainant’s business and create confusion with Complainant’s mark for commercial gain. Per Policy ¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain, indicates bad faith. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Additionally, Respondent’s use of the at-issue domain name to engage in illegal activity as detailed above likewise shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith).
Finally, Respondent registered <redweekinc.com> knowing that Complainant had trademark rights in the REDWEEK trademark. Respondent’s prior knowledge is evident given Respondent’s use of the domain name to impersonate Complainant using email from the at-issue domain name. It follows that Respondent intentionally registered the <redweekinc.com> domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <redweekinc.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redweekinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 2, 2018
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