RetailMeNot, Inc v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin
Claim Number: FA1811001818750
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin (“Respondent”), Unknown.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com>, registered with NameKing.com Inc.
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 November 29, 2018; the Forum received payment on November 29, 2018.
On January 14, 2019, NameKing.com Inc. confirmed by e-mail to the Forum that the <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names are registered with NameKing.com Inc. and that Respondent is the current registrant of the names. NameKing.com Inc. has verified that Respondent is bound by the NameKing.com Inc. 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 January 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2019 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@detailmenot.com, postmaster@retaailmenot.com, postmaster@rretailmenot.com, postmaster@retailmebot.com, and postmaster@retaolmenot.com. Also on January 17, 2019, 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 February 11, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, RetailMeNot, operates an online coupon and advertising service through its website and applications. It has rights in its RETAILMENOT mark through its registration with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 3,935,181 registered Mar. 22, 2011). See Compl. Ex. 8a. Respondent’s <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names are confusingly similar to Complainant’s mark because it changes or adds a letter (changes “r” to “d” in <detailmenot.com> domain name, adds “a” in the <retaailmenot.com> domain name, adds “r” in the <rretailmenot.com> domain name, changes the letter “n” to “b” in the <retailmebot.com> domain name, and changes “I” to “o” in to the <retaolmenot.com> domain name) and a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, the domain names resolve to ads/pay-per-click links for coupon sites that are directly competitive to Complainant’s services. See Compl. Ex. 9. Further, Respondent uses the <rretailmenot.com> domain name to redirect users to a spyware or malware download page. Id.
Respondent registered and uses the <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names in bad faith. Respondent uses the domain names to provide pay-per-click ads for directly competitive services. See Compl. Ex. 9. Moreover, Respondent uses the <rretailmenot.com> domain name to provide malware. Id. Additionally, Respondent owns all five domain names, which evinces a pattern of cybersquatting. Finally, Respondent failed to reply to Complainant's demand letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a major online coupon and advertising service through its website and applications.
2. Complainant has established its trademark rights in the RETAILMENOT mark through its registration of the mark with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 3,935,181, registered Mar. 22, 2011).
3. Respondent registered the <detailmenot.com> domain name on November 25, 2008, the <retaailmenot.com> domain name on July 29, 2009, the <rretailmenot.com> domain name on February 27, 2010, the <retailmebot.com> domain name on December 22, 2015 and the <retaolmenot.com> domain name on May 5, 2016.
4. Respondent has caused the disputed domain names to resolve to ads/pay-per-click links for coupon sites that are directly competitive to Complainant’s services and uses the <rretailmenot.com> domain name to redirect users to a spyware or malware download page.
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 RETAILMENOT mark based upon its registration of the mark with the USTPO. Registration with the USTPO generally establishes a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its registrations of the mark with the USTPO (e.g., Reg. No. 3,935,181, registered Mar. 22, 2011). See Compl. Ex. 8a. Accordingly, the Panel agrees and finds that Complainant has established rights in the RETAILMENOT mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s RETAILMENOT mark.
Complainant argues that Respondent’s <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names are confusingly similar to Complainant’s mark because Respondent uses the Complainant’s mark in its entirety, changing or adding only one letter, along with the addition of a gTLD to each of them. Such changes and additions may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Here, Respondent incorporated the RETAILMENOT mark and adds or changes letters, in each domain name. Respondent changed “r” to “d” in the <detailmenot.com> domain name, added “a” in the <retaailmenot.com> domain name, added “r” in the <rretailmenot.com> domain name, changed the letter “n” to “b” in the <retailmebot.com> domain name and changed “I” to “o” in the <retaolmenot.com> domain name and added a “.com” gTLD to Complainant’s RETAILMENOT mark. Therefore, the Panel concludes that the <detailmenot.com>,<retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names are confusingly similar to Complainant’s RETAILMENOT 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), 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 RETAILMENOT trademark and to use it in its domain names, making only minor spelling alterations in each domain name that do not negate the confusing similarity between the domain names and Complainant’s trademark;
(b) Respondent registered the <detailmenot.com> domain name on November 25, 2008, the <retaailmenot.com> domain name on July 29, 2009, the <rretailmenot.com> domain name on February 27, 2010 , the <retailmebot.com> domain name on December 22, 2015 and the <retaolmenot.com> domain name on May 5, 2016.
(c) Respondent has caused the disputed domain names to resolve to ads/pay-per-click links for coupon sites that are directly competitive to Complainant’s services and uses the <rretailmenot.com> domain name to redirect users to a spyware or malware download page;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com>, and <retaolmenot.com> domain names because Respondent is not authorized or permitted to use Complainant’s RETAILMENOT mark and is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). The Panel notes that the WHOIS of record identifies Respondent as “RetailMeNot, Inc v. Whois Foundation / DOMAIN MAY BE FOR SALE” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain names. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <detailmenot.com>, <retaailmenot.com>, <retailmebot.com>, and <retaolmenot.com> domain names for a legitimate noncommercial fair use because Respondent uses the domain names to promote pay-per-click ads for services that are directly competitive with those offered by Complainant. Using a domain name to offer competing pay-per-click links generally fails to confer rights and legitimate interests for the purposes of the Policy. See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is 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).”). Here, Complainant provides screenshots of the resolving web pages associated with the four domain names listed above, all of which show links such as “Coupon Free” and “Printable Coupons.” See Compl. Ex. 9. Thus, the Panel finds that such use fails to constitute a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits that Respondent’s use of the <rretailmenot.com> domain name does not generate rights or legitimate interests. Using a domain name to divert users to a site used for malware demonstrates a lack of rights or legitimate interests. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent made legitimate noncommercial or fair use of the Disputed Domain Name. Respondent is intentionally attempting to divert Internet users to its malware scam/survey website via the Disputed Domain and is therefore not making legitimate noncommercial, or fair use of the Disputed Domain pursuant to Policy ¶4(a)(ii).”). Here, Complainant provides a screenshot where the <rretailmenot.com> domain name resolves to a webpage displaying the message “rretailmenot.com – Security Check” along with a link stating “I’m human.” See Compl. Ex. 9. As the Panel finds Complainant’s evidence sufficient, the Panel finds that Respondent lacks rights and legitimate interests in the stated domain name under Policy ¶4(a)(ii).
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has demonstrated a pattern of bad faith under Policy ¶ 4(b)(ii) by registering the five domain names <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com>. Having multiple domain names that are confusingly similar to a complainant’s mark may constitute bad faith. See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Here, the Respondent has registered five domain names, all of which incorporate a variation of Complainant’s RETAILMENOT mark. Thus, the Panel agrees and finds this to be evidence of bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered and uses the <detailmenot.com>, <retaailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names to provide pay-per-click ads for directly competitive services. Using a domain name to provide links to competing services can evince bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Here, Complainant provides screenshots of the resolving web pages associated with the four domain names listed above, all of which show links such as “Coupon Free” and “Printable Coupons.” See Compl. Ex. 9. Therefore, the Panel concludes that Respondent registered and uses the <detailmenot.com>, <retaailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Thirdly, Complainant argues that Respondent registered and uses the <rretailmenot.com>
domain name in bad faith because it directs users to download malicious
software. Such use will evince bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v.
Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition,
Respondent’s undenied use of the websites resolving from the contested domain
names to distribute malware and other malicious downloads further illustrates
its bad faith in the registration and use of those domain names.”). Here,
Complainant provides a screenshot where the <rretailmenot.com> domain
name resolves to a webpage displaying the message “rretailmenot.com – Security
Check” along with a link stating “I’m human.” See Compl. Ex. 9. The
Panel agrees and finds that Respondent’s apparent use of the domain name in
connection with malware is sufficient to demonstrate bad faith under 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 names using the RETAILMENOT mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them 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 <detailmenot.com>, <retaailmenot.com>, <rretailmenot.com>, <retailmebot.com> and <retaolmenot.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 13, 2019
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