Capri Campers, LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2008001910229
Complainant is Capri Campers, LLC (“Complainant”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capricampers.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2020; the Forum received payment on August 27, 2020.
On August 27, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <capricampers.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 August 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@capricampers.com. Also on August 31, 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 September 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it manufactures and sells truck bed campers. Complainant has rights in the CAPRI mark through its registration in the United States in 2019. Complainant also has common law rights in the CAPRI and CAPRI CAMPER marks dating back to at least 1980: the marks were first used in commerce in 1969 and were subsequently extensively advertised, achieving widespread recognition. The original CAPRI “cowboy” camper has grown to become America’s #1 selling rodeo camper and the most popular camper with professional rodeo cowboys.
Complainant alleges that the disputed domain name is identical or confusingly similar to its CAPRI and CAPRI CAMPER marks, as it incorporates the marks in their entirety and adds, respectively, the descriptive term “campers”, or the letter “s”, along with the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its CAPRI or CAPRI CAMPER marks. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent hosts competing pay-per-click links and attempts to infect user computers with malicious software.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business for commercial gain by attempting to divert internet users seeking complainant’s services to the disputed domain name’s resolving website, where Respondent hosts competing pay-per-click hyperlinks. Respondent registered the disputed domain name with knowledge of Complainant’s common law rights in the mark. Respondent also uses the disputed domain name to infect user computers with malicious software. Finally, Respondent’s use of a privacy shield serves to further demonstrate bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law trademark rights for the marks CAPRI and CAPRI CAMPER and uses them to market camping cars.
Complainant’s trademark rights date back to at least 1980.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2003.
The resolving website displays click-through advertising links to competing products.
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”).
Complainant provides screenshots of its website and social media promotions, recognition of Complainant in articles and social media, and other examples that show longstanding use, extensive advertising, and widespread recognition of its CAPRI and CAPRI CAMPER marks. This evidence is sufficient to show that the CAPRI and CAPRI CAMPER marks have secondary meaning, thereby establishing its common law rights in the marks. Trademark rights in a mark are generally not necessary under Policy ¶ 4(a)(i) if a Complainant can demonstrate common law rights in the mark at the time of a disputed domain name’s registration. Secondary meaning, and common law trademark rights, may be established under Policy ¶ 4(a)(i) through factors such as longstanding use and extensive use of a mark, advertising, and widespread recognition. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Thus the Panel finds that Complainant rights in the CAPRI and CAPRI CAMPER marks under Policy ¶ 4(a)(i).
The disputed domain name incorporates Complainant’s marks in their entirety and merely adds the generic term “campers” or the letter “s” along with the “.com” gTLD. Under Policy ¶ 4(a)(i), adding a generic terms or an “s” to a mark along with the “.com” gTLD is generally insufficient to differentiating a disputed domain name from the mark it incorporates. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not authorized or licensed Respondent to use its marks in any way. Respondent it is not commonly known by the disputed domain name: where a response is lacking, use of a privacy service to redact WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name is used to divert internet users seeking Complainant’s website to a website that displays pay-per-click links to competing products. Under Policy ¶¶ 4(c)(i) and (iii), attempting to divert internet users from a Complainant’s website to a disputed domain name’s resolving website, where Respondent hosts hyperlinks that compete with Complainant’s business is not generally considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a non-commercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to disrupt Complainant’s business for commercial gain. Attempting to divert internet users seeking Complainant’s products or services to the disputed domain name’s resolving website, where Respondent hosts competing and related hyperlinks is generally considered bad faith disruption for commercial gain under Policy ¶ 4(b) (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b) (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 <capricampers.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 25, 2020
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