GfK Custom Research, LLC v. Sweeton, Andrew / Gfk NOP LLC
Claim Number: FA1910001867351
Complainant is GfK Custom Research, LLC (“Complainant”), represented by Chris Pietronigro of 200 Liberty Street, 4th Floor, New York, USA. Respondent is Sweeton, Andrew / Gfk NOP LLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gfkamerica.com>, registered with Network Solutions, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2019; the Forum received payment on October 17, 2019.
On October 18, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <gfkamerica.com> domain name (the Domain Name) is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 12, 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@gfkamerica.com. Also on October 22, 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 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is a market research company which leverages proprietary and third-party data to create predictive market and consumer insights for its clients. Complainant previously operated under the name “GfK NOP, LLC.” Complainant has rights in the GfK mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <gfkamerica.com> Domain Name is identical or confusingly similar to Complainant’s GfK mark as it incorporates the GfK trademark and adds the term “america,” which is confusing as Complainant operates one of its North American companies as “GfK US.”
Respondent has no rights or legitimate interests in the Domain Name. Complainant previously owned the Domain Name but allowed it lapse and Respondent acquired it, falsely registering it under the name of the named Respondent, Andrew Sweeton / Gfk NOP, LLC. Mr. Sweeton is a former employee of Complainant who retired in 2011. He is not the owner of the Hotmail email account listed with the registrar, nor did he register the Domain Name. GfK NOP, LLC is Complainant’s former entity name, which was changed to GfK Custom Research, LLC. It is not the real registrant of the Domain Name either. The true Respondent is using the Domain Name to hold itself out as Complainant and offer services in the marketing research sphere.
Respondent registered and uses the Domain Name in bad faith. It uses the Domain Name in attempts to attract, for commercial gain, users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site, where it passes off as Complainant and purports to sell services which compete with Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The GfK mark was registered to GfK SE with the USPTO (Reg. No. 5,728,674) on April 16, 2019 (Amended Complaint Annex C). A complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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). By letter from Thomas Müller, Director of Legal & Compliance for GfK SE, GfK SE confirms that it has authorized Complainant, a subsidiary company, to bring and maintain this proceeding. On this evidence, the Panel finds that Complainant has sufficient rights in the GfK mark to meet the requirements of Policy ¶ 4(a)(i).
Respondent’s <gfkamerica.com> Domain Name is confusingly similar to the GfK mark, as it incorporates the mark in its entirety, merely adding the geographic term “america” and the generic top-level domain gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.), Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the GfK mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent falsely registered it in the name of a former employee of Complainant and is using it to offer services which compete with those of Complainant. These allegations are addressed as follows:
Amended Complaint Annex A is a PDF copy of the web site previously resolving from the Domain Name.[i] At the top of the first page is the name “gfk America” immediately adjacent to an orange square which is the same color and almost the same configuration and size as Complainant’s registered logo (USPTO Reg. No. 5,728,674) (Amended Complaint Annex C). Subsequent pages make clear that Respondent’s web site is commercial in nature and is impersonating and offering the same services as Complainant. Using a confusingly similar domain name to pass off as and compete with a complainant does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Complainant did not address the provisions of Policy ¶ 4(c)(ii) but the information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Sweeton, Andrew / Gfk NOP, LLC.” Complainant states that this information is false. Andrew Sweeton is a former employee of Complainant who retired in 2011. Mr. Sweeton told Complainant that he does not own the Hotmail email account listed for the registrant on the records of the registrar, and that he did not register the Domain Name. The other name to which the Domain Name was registered, GfK NOP, LLC, was Complainant’s previous name, which was changed to its current form in 2008 (Amended Complaint Annex B). The street address and telephone number listed with the registrar for the registrant are the former street address and telephone number of GfK NOP, LLC, neither of which is current. The Domain Name was previously owned and used by GfK NOP, LLC to market the services of its U.S.-based entities until it inadvertently allowed the registration to lapse and the current registrant acquired it late in August 2017 (WHOIS historical record pertaining to the Domain Name). Complainant has specific competence to make the foregoing allegations and the Panel takes them as true. This evidence is persuasive and the Panel finds that neither Andrew Sweeton nor GfK NOP, LLC is the current registrant of the Domain Name. All further references to “Respondent” in this Decision mean and refer to the person who actually registered the Domain Name and not to Andrew Sweeton or GfK NOP, LLC. Finally, there is no evidence that whoever did register the Domain Name has been commonly known by the Domain Name, and the Panel finds that that person or entity has not been so known.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the confusingly similar Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. Also, by registering and using a confusingly similar domain name to attract Internet traffic to Respondent’s own web site, where it offers the same types of services offered by Complainant, Respondent is disrupting the business of Complainant. This fits squarely within the circumstances articulated by Policy ¶¶ 4(b)(iii) and (iv) and is clear evidence of bad faith registration and use. Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”), Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”), Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“Respondent offers support services related to Complainant’s products that are in direct competition with the services Complainant offers. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).”).
Finally, it is evident from the fact that the information under the “About” tab at Respondent’s web site contains contact information listing Andrew Sweeton and the now-defunct former street address and telephone number of Complainant, states Complainant’s current name and provides many pages of information about the company, from Respondent’s copying Complainant’s mark into the Domain Name, and from Respondent’s use of a nearly identical image of Complainant’s orange logo that Respondent had actual knowledge of Complainant and its mark when it acquired the Domain Name late in August 2017 (WHOIS historical report shows the acquisition date). Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering (or acquiring)[ii] a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gfkamerica.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
November 25, 2019
[i] Webhosting Hub, Inc., the host of Respondent’s web site, suspended the site following complaint by Complainant (Complaint Annex D). The site is not currently accessible.
[ii] The WHOIS information furnished to the FORUM by the registrar shows that the Domain Name was created in 2005. For purposes of a UDRP bad faith analysis, however, the relevant date is the date on which the respondent acquired the domain name. EMindful Inc. v. Yao Chang, FA 1825435 (Forum Feb. 20, 2019) (“The date on which the current registrant acquired the Domain Name is the relevant date in assessing bad faith.”)
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