Ownerly, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2002001885700
Complainant is Ownerly, LLC (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <owenerly.com>, <owenrly.com>, <onwnerly.com> and <ownerlt.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2020; the Forum received payment on February 26, 2020.
On February 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2020 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@owenerly.com, postmaster@owenrly.com, postmaster@onwnerly.com, postmaster@ownerlt.com. Also on February 27, 2020, 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 March 24, 2020, 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, Ownerly LLC, is a real estate valuation company. Complainant has rights in the OWNERLY mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,909,768, registered Nov. 12, 2019). See Compl. Ex. 1. Respondent’s <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names are confusingly similar to Complainant’s OWNERLY mark as the domain names each incorporate the mark in its entirety while merely including a typo of a single letter.
Respondent has no rights or legitimate interests in the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names. Respondent is not licensed or authorized to use Complainant’s OWNERLY mark and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to resolve to parked webpages that are being used to obtain click-through revenue by linking to third-party websites.
Respondent registered and uses the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names in bad faith. Respondent uses the disputed domain names to attract Internet users to its websites and commercially benefit via third-party pay-per-click links. In addition, Respondent failed to make active use of the disputed domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the OWNERLY mark prior to the registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company, engaged in the real estate valuation industry.
2. Complainant has established its trademark rights in the OWNERLY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,909,768, registered Nov. 12, 2019).
3. Respondent registered the <owenerly.com> domain name on January 6, 2020, the <owenrly.com> domain name on January 24, 2020, the <onwnerly.com> domain name on January 24, 2020, and the <ownerlt.com> domain name on January 15, 2020.
4. Respondent uses the disputed domain names to resolve to parked webpages that are being used to obtain click-through revenue by linking to third-party 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”).
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 OWNERLY mark based upon registration of the mark with the USPTO (e.g., Reg. No. 5,909,768, registered Nov. 12, 2019). See Compl. Ex. 1. Registration of a mark with the USPTO may be sufficient to establish rights in that mark. See 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). The Panel therefore holds that Complainant’s registration of the OWNERLY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OWNERLY mark. Complainant argues Respondent’s <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names are confusingly similar to the OWNERLY mark, as the domain names each incorporate the mark in its entirety along with a typo of one letter. While not argued by Complainant, the Panel notes the disputed domain names also add the “.com” generic top-level domain (“gTLD”) to Complainant’s mark. Such changes may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains a typo-squatted version of the mark and adds the “.com” generic top-level domain (“gTLD”)); 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.’). Complainant contends that Respondent’s domain names merely change one letter in the OWNERLY mark: the <owenerly.com> name adds a letter “e” after the letter “w”; the <owenrly.com> name transposes the letter “n” with the letter “e”; the name <onwnerly.com> transposes the letter “w” with the letter “n”; and the name <ownerlt.com> replaces the letter “y” with a “t.” The Panel determines the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names are confusingly similar to the OWNERLY mark per 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 OWNERLY trademark and to use it in its domain names, making only minor spelling alterations that do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <owenerly.com> domain name on January 6, 2020, the <owenrly.com> domain name on January 24, 2020, the <onwnerly.com> domain name on January 24, 2020, and the <ownerlt.com> domain name on January 15, 2020;
(c) Respondent uses the disputed domain names to resolve to parked webpages that are being used to obtain click-through revenue by linking to third-party websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the OWNERLY mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain names as “Carolina Rodrigues / Fundacion Comercio Electronico,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s OWNERLY mark. See Compl. Ex. 4. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <owenerly.com>, <owenrly.com>, <onwnerly.com> or <ownerlt.com> domain names;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names is demonstrated by its failure to use the disputed domain names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant contends that Respondent uses the disputed domain names’ parked resolving websites to display pay-per-click hyperlinks that reference third-party websites unrelated to Complainant’s business. Use of a domain name that is confusingly similar to a complainant’s mark to resolve to a pay-per-click website is not a use indicative of rights or legitimate interests per Policy ¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides a screenshot of the resolving webpage for the <onwnerly.com> domain name, displaying various click-through hyperlinks. See Compl. Ex. 5. Complainant also provides a screenshot for the <owenerly.com> domain name resolving webpage displaying a popup message indicative of a passive use of the domain name. Id. The Panel notes that Complainant provides two other screenshots, presumably the resolving pages for the <owenrly.com> and <ownerlt.com> domain names showing similar passive-use pop up messages, although this isn’t clear from the complaint or exhibits. The Panel finds Respondent does not use the disputed domain names to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
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 contends Respondent’s bad faith is evidenced by Respondent’s use of the disputed domain names to resolve to webpages displaying pay-per-click links. Using a confusingly similar domain name to offer competing hyperlinks can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (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).”); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant contends that the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names resolving websites either display pay-per-click hyperlinks to third-party websites or indicate passive use. See Compl. Ex. 5. The Panel therefore finds that Respondent has registered and uses the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant contends Respondent is not actively using the disputed domain names. Inactive holding of a domain name may be bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides screenshots of the disputed domain names’ resolving webpages demonstrating inactive use. See Compl. Ex. 5. The Panel finds that Respondent’s failure to use the domain names actively indicates that Respondent registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that in light of the fame and notoriety of its OWNERLY mark, it is inconceivable that Respondent could have registered the <owenerly.com>, <owenrly.com>, <onwnerly.com>, and <ownerlt.com> domain names without actual or constructive knowledge of Complainant's rights in the mark. The Panel here may find that any arguments of bad faith based on constructive notice are usually not successful because prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant submits that Respondent’s use of typo-squatted versions of the OWNERLY mark in the disputed domain names indicates it had actual knowledge of Complainant’s business and rights in the mark. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the OWNERLY mark and thus registered the name in 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 OWNERLY 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 <owenerly.com>, <owenrly.com>, <onwnerly.com> and <ownerlt.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 25, 2020
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