Maplebear Inc. DBA Instacart v. Milen Radumilo
Claim Number: FA2006001900943
Complainant is Maplebear Inc. DBA Instacart (“Complainant”), represented by Candice E. Kim of Greenberg Traurig, LLP, United States. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instacart.info>, registered with Dynadot, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2020; the Forum received payment on June 18, 2020.
On June 20, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <instacart.info> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@instacart.info. Also on June 23, 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 July 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Maplebear Inc. DBA Instacart, operates an Internet-based delivery and pick-up service.
Complainant has rights in the INSTACART mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <instacart.info> domain name is identical to Complainant’s mark because it entirely incorporates Complainant’s INSTACART mark and simply adds a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <instacart.info> domain name. Respondent is not licensed or authorized to use Complainant’s INSTACART mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the at-issue domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to pass off as Complainant and display pay-per-click links.
Respondent registered and uses the <instacart.info> domain name in bad faith. Respondent has displayed a pattern of bad faith domain name registration. Additionally, on occasion Respondent attracts internet users to the <instacart.info> website for commercial gain by displaying pay-per-click links to competing grocery delivery related services. On other occasions, browsing to <instacart.info> Respondent’s directed users to a page that asks the users to install an extension for the Google Chrome browser before the page resolves to a link to Complainant’s own website <instacart.com>. Finally, Respondent had actual knowledge of Complainant’s rights in the INSTACART mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in INSTACART.
Respondent is not affiliated with Complainant and is not authorized to use the INSTACART mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in INSTACART.
Respondent uses the at-issue domain name to provide pay-per-click links to third parties including some that are competitors of Complainant.
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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant’s registration of the INSTACART mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Further, Respondent’s <instacart.info> domain name contains Complainant’s entire INSTACART trademark alone followed by a domain name-necessary generic top-level domain name, here “.info”. The slight difference between Complainant’s trademark and Respondent’s domain name does nothing to distinguish the at-issue domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <instacart.info> domain name is identical to Complainant’s INSTACART trademark. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Milen Radumilo” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <instacart.info> domain name. The Panel therefore concludes that Respondent is not commonly known by the <instacart.info> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, Respondent uses the <instacart.info> domain name to address a website that presents pay-per-click links referencing third parties that compete with Complainant. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 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 at-issue domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses its <instacart.info> domain name to address a website hosting pay-per-click links to Complainant’s competitors and commercially benefits therefrom. Respondent’s use of the trademark identical <instacart.info> domain name in this manner shows bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also 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.”).
Next, Respondent appears to have registered other domain names that infringe on the rights of trademark owners in so far as there have been numerous adverse UDRP decisions concerning Respondent. Respondent thus exhibits a pattern of cybersquatting. The pattern suggests Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii)). As Complainant points out, at least one other panel held that Respondent’s bad faith registration of a confusingly similar domain name was suggested by Respondent’s prior history of adverse UDRP decisions. See T-Mobile, USA, Inc. dba Metro PCS v. Milen Radumilo, FA FA1701001714313 (FORUM March 13, 2017) (“Complainant offers that Respondent has been a respondent in numerous UDRP proceedings, including against Energizer Brands, Michelin North America, and The Toronto-Dominion bank, among others. The Panel agrees that Respondent’s previous similar behavior evidences bad faith in the present proceeding.”). Respondent’s alternative use of the at-issue domain name, to facilitate the installation of software on internet users’ computers via a browser extension, is indicative of an underlying phishing scheme and further points to bad faith registration and use of the <instacart.info> domain name. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (concluding respondent used the “domain to engage in phishing, which means [r]espondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii)”).
Finally, Respondent had actual knowledge of Complainant’s rights in the INSTACART mark when it registered <instacart.info> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s INSTACART trademark and from Respondent’s use of the domain name to host competitive pay-per-click links. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Respondent’s registration and use of the trademark identical <instacart.info> domain name with knowledge of Complainant’s trademark rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <instacart.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 15, 2020
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