Petal Card, Inc. v. Thomas Ray III
Claim Number: FA1907001853182
Complainant is Petal Card, Inc. (“Complainant”), represented by Carissa L. Weiss of Law Office of Carissa L. Weiss, PLLC, New York, USA. Respondent is Thomas Ray III (“Respondent”), Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petalvisa.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.
Ho Hyun Nahm, Esq. Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2019; the Forum received payment on July 22, 2019.
On July 23, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <petalvisa.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 July 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@petalvisa.com. Also on July 24, 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 August 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has rights in the PETAL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,371,632 registered Jan. 2, 2018). See Compl. Ex. B. Respondent’s <petalvisa.com> is identical or confusingly similar to Complainant’s PETAL mark as Respondent combines Complainant’s Mark and the third party VISA mark to form the disputed domain name.
ii) Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name now resolves to a webpage that includes six links to various third-party credit card-related and credit service-related websites. Respondent’s disputed domain name initially resolved to a webpage that prominently featured Complainant’s product and apparently attempts to solicit reviews of Complainant’s product.
iii) Respondent registered and used the disputed domain name in bad faith by offering to sell the disputed domain name to Complainant. Respondent also attempts to redirect consumers to third-party websites for commercial gain.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on July 8, 2019.
2. Complainant has established rights in the PETAL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,371,632 registered Jan. 2, 2018).
3. The disputed domain name resolves to a webpage that prominently features Complainant’s product.
4. The disputed domain name resolves to a webpage that includes links to various third-party credit card-related and credit service-related websites.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the PETAL mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per 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.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the PETAL mark. (e.g. Reg. No. 5,371,632 registered Jan. 2, 2018). See Compl. Ex. B. Therefore, the Panel finds that Complainant has shown rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar or identical to Complainant’s mark. It contends that Respondent incorporates its PETAL mark in its entirety and adds the third-party mark VISA. A domain name that combines a complainant’s mark and a third-party mark does not distinguish the domain name from Complainant's mark per Policy ¶ 4(a)(i). See Section 4.13, 'WIPO Jurisprudential Overview 3.0' (the presence, in a particular disputed domain name, of the mark of a third party not joined in a particular proceeding (e.g., <complainantmark+thirdpartymark>) would not by itself prevent a finding of confusing similarity.); see also Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1760812 (Forum Jan. 8, 2018) (finding confusing similarity where the domain name included the complainants mark, plus the addition of the third-party mark WORKDAY, which belonged to a provider of salary and other services used by Complainant; holding however “that “workday” is a dictionary term which can be treated as generic and of lessor distinctive value when joined with Complainant’s trademark”).
The Panel observes that the addition of a generic top-level domain (“gTLD”) is irrelevant when determining confusingly similarity of mark and domain name. See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Respondent adds the “.com” gTLD.
Therefore, the Panel concludes that the disputed domain name is confusingly similar or identical to Complainant’s PETAL mark per Policy ¶ 4(a)(i).
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”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the PETAL mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Thomas Ray III” and there is no other evidence to suggest that Respondent was authorized to use the PETAL mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that the disputed domain name now resolves to a webpage that includes links to various third-party credit card-related and credit service-related websites. Use of a disputed domain name to resolve to a webpage that provides links to third party sites related or unrelated to complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving webpage that shows links to credit related sites. See Compl. Ex. F. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because the disputed domain name resolves to a webpage that prominently features Complainant’s product in an attempt to solicit reviews. Use of a disputed domain name to solicit reviews strictly for commercial gain may not evince rights and legitimate interests. See Lacoste and Lacoste Alligator SA v. Domain Manager, WIPO Case No. D2016-2181 (Respondent had no legitimate interest in the domain name lacoste.feedback, used for reviews of Lacoste products, where it “created confusion between it and the Complainants by (i) extensively reproducing the LACOSTE trademarks including the famous crocodile logo, (ii) providing links to official Lacoste websites and social networks, and (iii) reproducing only the best consumer reviews copied from another website and changing the posted dates of same”). Complainant has provided screenshots of Respondent’s domain name’s resolving webpage which Complainant argues feature its product and reviews of the products. See Compl. Ex. D. Therefore, the Panel finds that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and used the disputed domain name in bad faith by offering to sell the disputed domain name to Complainant. Offer to sell a disputed domain name to a complainant may be evidence of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)). Complainant has provided the Panel with an email chain where Respondent appears to offer to sell the disputed domain name for $2 Million. See Compl. Ex. H. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant further argues that Respondent attempts to redirect consumers to third-party websites for commercial gain. Use of a disputed domain name to redirect Internet users to third-party websites may be evidence of bad faith per 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.”). Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage which appears to feature links to credit related sites. See Compl. Ex. F. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <petalvisa.com> domain name be TRANSFERRED from Respondent to Complainant.
The transfer of the disputed domain name shall be ordered without prejudice to any rights of the third party VISA in the disputed domain name.
Ho Hyun Nahm, Esq., Panelist
Dated: August 19, 2019
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