NBC Fourth Realty Corp. v. Privacy.co.com / Savvy Investments, LLC
Claim Number: FA2004001891363
Complainant is NBC Fourth Realty Corp. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, United States. Respondent is Privacy.co.com / Savvy Investments, LLC (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tjmaxx.co>, registered with Sea Wasp, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically April 8, 2020; the Forum received payment April 15, 2020.
On April 9, 2020, Sea Wasp, LLC confirmed by e-mail to the Forum that the <tjmaxx.co> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC verified that Respondent is bound by the Sea Wasp, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@tjmaxx.co. Also on April 17, 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 May 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in this Proceeding:
Complainant, NBC Fourth Realty Corp., is a retailer of off-price apparel and home fashion. Complainant has rights in the TJMAXX mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,495,462, registered July 5, 1988). See Compl. Ex. E. Respondent’s <tjmaxx.co> domain name is identical on its face to Complainant’s TJMAXX mark, adding only the “.co” top-level domain (“TLD”).
Respondent has no rights or legitimate interests in the <tjmaxx.co> domain name. Respondent is not commonly known by the disputed domain name or by Complainant’s mark. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to display pay-per-click links. Further, Respondent’s website attempts to distribute malware to users.
Respondent registered and uses the <tjmaxx.co> domain name in bad faith. Respondent attempts to sell the disputed domain name at an inflated price. Respondent has also engaged in a pattern of bad faith registration. Further, Respondent’s attempts to attract Internet users to its website for commercial gain, which is evidence of bad faith. Additionally, Respondent uses the disputed domain name to distribute malware, also evidence of bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the TJMAXX mark.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the disputed domain name September 26, 2015, some 27 years after Complainant established rights in the mark. See Compl. Ex. B.
Complainant established that it has rights and legitimate interests in the protected mark used in the disputed domain name.
Respondent has no such rights to or legitimate interests in the mark and thus none in the domain name using it.
Respondent registered a disputed domain name using Complainant’s protected mark and the domain name is identical to and at least confusingly similar to Complainant’s mark.
Respondent registered and used the disputed domain name in bad faith.
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 that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical to 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.
Given 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 will draw such inferences as the Panel 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:
Complainant asserts rights in the TJMAXX mark based upon registration with the USPTO (e.g., Reg. No. 1,495,462, registered July 5, 1988). See Compl. Ex. E. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the TJMAXX mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <tjmaxx.co> domain name is identical on its face to Complainant’s TJMAXX mark, adding only the “.co” TLD. Addition of a TLD to a mark is irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Thus, the Panel finds that the disputed domain name is identical or confusingly similar to the TJMAXX mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 that Respondent has no rights to or legitimate interests in the <tjmaxx.co> domain name and Respondent is not commonly known by the disputed domain name or by Complainant’s mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and no prima facie evidence (shows) that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record notes “privacy.co.com / savvy investments, LLC” as the registrant organization. See Compl. Ex. B. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <tjmaxx.co> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the domain to display pay-per-click links. Use of a disputed domain name to offer hyperlinks to competing or unrelated webpages is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(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). Complainant argues that Respondent uses the TJMAXX mark to misleadingly divert consumers to its pay-per-click site. Complainant provides a screenshot of Respondent’s website. See Compl. Ex. F. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also argues that Respondent does not use the <tjmaxx.co> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent’s website attempts to distribute malware to users. Use of a disputed domain name to spread malicious software to users’ computers is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Baker v. J M, FA 1259254 (Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). Complainant provides a screenshot of a threat warning from a computer browser associated with an attempt to access Respondent’s webpage. See Compl. Ex. F. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name that contains Complainant’s protect mark in it’s entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent registered and uses the <tjmaxx.co> domain name in bad faith since Respondent attempts to sell the disputed domain name at an inflated price. Offering to sell a disputed domain name for a price in excess of the out-of-pocket registration cost evidences bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides correspondence between Respondent and Complainant in which Respondent offers to sell the disputed domain name for $400. See Compl. Ex. G. Based upon this, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also argues that Respondent engaged in a pattern of bad faith registration. A previous pattern of bad faith domain name registration may be used as additional evidence of bad faith per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondent’s previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant notes that multiple UDRP cases have been successfully brought against Respondent and includes examples of such cases. See Compl. Ex. H. Therefore, the panel finds bad faith under Policy ¶ 4(b)(ii).
Further, Complainant claims that Respondent registered and uses the <tjmaxx.co> domain name in bad faith because Respondent attempts to attract Internet users to its website for commercial gain. Use of a disputed domain name to display hyperlinks to commercial webpages is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant provides screenshots of Respondent’s webpage and notes that the links relate to both unrelated and competing goods. See Compl. Ex. F. Complainant also notes that Respondent’s use of the domain name results in commercial gain by forwarding users to various websites in exchange for payment. Thus, the Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent uses the <tjmaxx.co> domain name to distribute malware. Use of a disputed domain name to infect users’ computers with malware is evidence of bad faith registration and use pursuant Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel is reminded that Complainant provides a screenshot of a threat warning from a computer browser arising from an attempt to access Respondent’s webpage. See Compl. Ex. F. Therefore, the Panel agrees with Complainant that respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TJMAXX mark. While constructive knowledge is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark is sufficient for a finding of bad faith. 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.”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be found based on (…) the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant contends that Respondent had actual knowledge of Complainant’s TJMAXX mark due to the extensive global fame of the mark, which long predates the creation of the<tjmaxx.co> domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s interests in its own protected mark before using and attempting to exploit it; the Panel finds bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered a disputed domain name containing Complainant’s protected mark in its entirety; and Respondent registered and attempted to use the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tjmaxx.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 27, 2020.
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