Personalizationmall.com v. Privacy.co.com - 40043 / Savvy Investments, LLC Privacy ID# 997906
Claim Number: FA1910001867020
Complainant is Personalizationmall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Privacy.co.com - 40043 / Savvy Investments, LLC Privacy ID# 997906 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personalizationmall.net> (‘the Domain Name’), registered with Sea Wasp, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2019; the Forum received payment on October 16, 2019.
On October 22, 2019, Sea Wasp, LLC confirmed by e-mail to the Forum that the <personalizationmall.net> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 October 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@personalizationmall.net. Also on October 25, 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 November 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant is the owner of the marks PERSONALIZATION MALL AND PERSONALIZATIONMALL.COM, first registration of PERSONALIZATION MALL being in the USA in 2002 for personalized goods. It operates a web site at personalizationmall.com.
The Domain Name registered in 2011 is confusingly similar or identical to the Complainant’s trademarks, as gTLDs do not prevent confusing similarity between a domain name and a mark.
The Domain Name has been used for pay per click links for competing products some of which refer to the complainant’s trademark PERSONALIZATIONMALL.COM.
The Domain Name has been offered for sale generally.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
Use of a Domain Name to point to pay per click links offering competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is bad faith registration and use of the Domain Name.
Offering a domain name for sale generally for a sum in excess of out of pocket costs of registration is bad faith registration and use of a domain name.
The Respondent has been subject to a number of adverse rulings under the UDRP and owns other domain names containing versions of third party trademarks showing a pattern of cybersquatting conduct.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the marks PERSONALIZATION MALL and PERSONALIZATIONMALL.COM with first registration of PERSONALIZATION MALL being in the USA in 2002 for personalized goods. It operates a web site at personalizationmall.com.
The Domain Name registered in 2011 has been offered for sale and points to pay per click links that offer competing goods some of which refer to the Complainant’s PERSONALIZATIONMALL.COM trade mark. The Respondent has been the subject of adverse rulings under the Policy and owns other domain names containing the trademarks of others.
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”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant’s PERSONALIZATION MALL mark (registered, inter alia in the USA for personalized goods since 2002) and the gTLD .net.
A gTLD does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights. There is no need to consider other marks of the Complainant for this limb of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its PERSONALIZATION MALL mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site to which the Domain Name redirects offers links to goods in competition with those of the Complainant. It is commercial so cannot be a legitimate noncommercial or fair use. It does not make it clear that there is no commercial connection with the Complainant and some of the links refer to the Complainant’s PERSONALIZATIONMALL.COM mark which is also registered in the USA for personalized goods as of 2011. The Panel finds this use is confusing. As such, it cannot amount to the bona fide offering of goods and services. See McGuireWoods LLP v. Mykhailo Loginov/Loginov Enterprises doo, FA1412001584837 (Forum Jan. 22, 2015) (‘The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with the Complainant .. is not a bona fide offering of goods or services pursuant to 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy 4 (b)(iii).).
Offering a domain name for sale and owning other domain names containing the trademarks of third parties are also an indication of a lack of rights and legitimate interests.
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name identical to the Complainant’s PERSONALIZATION MALL mark for the purposes of the Policy and use it for links to competing goods.
In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe the links on it are connected to or approved by the Complainant as they offer competing goods some of which refer to the Complainant’s PERSONALIZATIONMALL.COM mark. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site or goods on it likely to disrupt the business of the Complainant. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum January 8, 2018) and Capital One Financial Corp DN Manager/Whois-Privacy.net Ltd, FA1504001615034 (Forum June 4, 2015).
The Domain Name has also been offered for sale generally and the Respondent has been subject to a number of adverse decisions under the Policy and owns other domain names containing versions of third party trademarks.
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paras 4 (b) (i), (ii), (iii) and (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 <personalizationmall.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 18, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page