Click Sales, Inc. v. Invesment online
Claim Number: FA2009001910932
Complainant is Click Sales, Inc. (“Complainant”), represented by Allison Haugen of Holland & Hart LLP, Idaho, USA. Respondent is Invesment online (“Respondent”), Panama
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clickbank-contracts.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 1, 2020; the Forum received payment on September 1, 2020.
On September 1, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <clickbank-contracts.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@clickbank-contracts.com.
Also on September 3, 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 29, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the trademark CLICKBANK established through its ownership of the portfolio of service mark registrations described below and its use of the mark in its retail financial services business. Complainant asserts that it has used the mark in making sales to millions of customers in over 200 countries around the world and claims to effect over 30,000 transactions daily involving 4,000 products.
Complainant alleges that the disputed domain name <clickbank-contracts.com>, which merely adds the descriptive term “contracts” to Complainant’s well-known CLICKBANK mark is confusingly similar to Complainant’s CLICKBANK mark.
Complainant submits that panels established under the Policy have generally found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold required to establish confusing similarity and adds that the mere addition of a descriptive term does not distinguish a disputed domain name but instead “serves to accentuate rather than to diminish the confusing similarity.” Revlon Consumer Products Corp. v. Amar Fazil, WIPO Case No. D2011-0014 (Mar. 1, 2011).
Here, Complainant argues that the addition of “contracts” does not distinguish Respondent’s use because businesses enter into contracts as a matter of course.
Complainant further submits that the addition of the generic top-level domain extension <.com> is irrelevant for purposes of ascertaining confusing similarity. See Wal-Mart Stores Inc. v. Sok kyu Kim, Sokkyu, WIPO Case No. D2006-1502 (Feb. 9, 2007) (“the addition of a generic top-level domain name extension such as ‘.com’ is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.”)
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known under Complainant’s CLICKBANK mark or any similar name under Policy ¶ 4(a)(ii).
Complainant adds that it has been unable to find any evidence suggesting that Respondent could claim any legitimate rights in the CLICKBANK mark.
Complainant further submits that Respondent is using Complainant’s CLICKBANK mark in the disputed domain name without permission. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (Mar. 14, 2000) (no rights or legitimate interests where respondent did not apply for permission or license from complainant to use the mark).
Moreover, Complainant argues that the disputed domain name is associated with unauthorized and deceptive activity; that specifically Respondent is using the disputed domain name as the address of a website to impersonate Complainant and submits that such use cannot give rise to legitimate interests in the disputed domain name. See, BBY Solutions, Inc. v. Richard Stavis / Geek Support, Claim No. FA2006001899618 (Forum July 8, 2020) (“Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Complainant demonstrated that the disputed domain name resolves to a website that impersonates Complainant’s website and uses Complainant’s GEEK SQUAD Mark.”).
Complainant further argues that Respondent cannot claim rights or a legitimate interest in the disputed domain name because Respondent was aware of Complainant and Complainant’s mark prior to its registration of the disputed domain name. Not only had Respondent constructive notice of Complainant’s marks due to Complainant’s trademark registrations, but Respondent’s website demonstrates actual knowledge of Complainant. Referring to screenshots of the website to which the disputed domain name resolves, Complainant submits that Respondent’s website incorporates Complainant’s Stylized “C” mark as well as Complainant’s CLICKBANK mark; mimics Complainant’s origin story; and explicitly states that it formerly “specialized in Affiliated Marketing,” which is part of Complainant’s business and has “developed this new business model with Cryptocurrencies, as we realize how the market trend is.”
Complainant argues that previous panels established under the Policy have held that there can be no right or legitimate interest under Policy ¶ 4(c)(i) when a respondent had notice that a complainant possesses strong trademark rights in a mark identical or similar to the disputed domain name. See Belo Corp. v. George Latimer, WIPO Case No. D2002-0329 (May 16, 2002) (finding that registration of <providencejournal.com> demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith arguing that Complainant’s attempts to pass itself off as Complainant amounts to bad faith. See Balanced Health Botanicals LLC v Sona Disongo, Steroid, WIPO Case No. D2019-2414 (Nov. 29, 2019) (ordering transfer where Respondent’s actions amounted to bad faith by attempting to pass itself off as Complainant and “attract Internet users to its website for its own commercial benefit.”).
Furthermore, Complainant asserts that Respondent’s attempts to “mislead users by pretending to be” Complainant is indicative of bad faith. See Emirates National Oil Company Limited – ENOC LLC v. Clarion Inc/ Acentor Benjamin, WIPO Case No. D2014-1725 (Dec. 3, 2014).
Complainant adds that Respondent’s continued ownership of the disputed domain name is detrimental to Complainant and provides Respondent with a significant opportunity to undertake activities designed to benefit from the goodwill in Complainant’s trademarks. “As Complainant does not control the disputed domain name, the fact that Respondent has redirected the disputed domain name to Complainant’s website makes clear that Respondent is well aware of Complainant and the BAZARCHIC mark and that Respondent could easily use the disputed domain name at any time to benefit Respondent in some way from its association with Complainant if it is not already doing so.” Bazarchic v. Milen Radumilo, WIPO Case No. D2019-2781 (Jan. 9, 2020).
Moreover, Complainant submits that Respondent is well aware of Complainant’s rights as indicated by its direct copying of Complainant’s origin in San Diego, California in 1998 and its allegations that it formerly “have specialized in Affiliate Marketing” as alleged above.
Complainant submits that Respondent is undoubtedly seeking to capitalize on Complainant’s reputation in order to induce consumers to invest in its scheme. Complainant asserts that it cannot control the disputed domain name, which may be fraudulently inducing third parties to provide money or personally identifying information. If such investments are not refunded, any negative goodwill will be attributed to Complainant, to its significant detriment.
Finally, Complainant submits that Respondent has provided incomplete and inaccurate contact information when registering the disputed domain name, which supports a finding of bad faith, arguing that Respondent included a phone number that only includes nine digits, instead of ten (+1.256485986) and a postal code that include eight digits, instead of five (26826355). Additionally, the contact information further only identifies a city (Washington, D.C.). Also the website associated with the disputed domain name purports to be located in Ontario, Canada and the contact information provides the name, “Invesment online,” which is a non-existent entity. Complainant submits that “[p]roviding incomplete and/or false information in the WHOIS directory is evidence of bad faith in domain name disputes.” Interactive Media Group (Canada) Limited v. Café au Lait, FA0005000094893 (Forum June 28, 2000), citing America Online, Inc. v. QTR Corp., FA 00001000092016 (Forum May 9, 2000).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services and is the owner of a portfolio of registered service marks including the following:
· United States Registered Service Mark CLICKBANK, registration number 3,025,708, registered on the Principal Register on December 13, 2005 for services in international class 35;
· United States Registered Service Mark CLICKBANK registration number 6,023,077, registered on the Principal Register on March 31, 2020 for services in international classes 35, 41 and 42;
· United States Registered Service Mark CLICKBANK UNIVERSITY registration number 4,829,790 registered on the Principal Register on October13, 2015 for services in international class 41;
· United States Registered Service Mark stylized “C” device, registration number 3,433,879 registered on the Principal Register on May 27, 2008 for services in international classes 35 and 35.
Complainant has an established Internet presence hosting a website to provide its services to which its domain name <clickbank.com> resolves.
The disputed domain name <clickbank-contracts.com> was registered on May 4, 2020 and resolves to a website that purports to market financial products offered online, based on cryptocurrencies, including investment plans,
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the enquiry by the Forum requesting details of the registration of the disputed domain name for the purposes of this proceeding.
Respondent had availed of a privacy service to conceal its identity and its name was disclosed by the Registrar for the purposes of 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 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 has adduced clear and convincing, uncontested evidence of its claimed rights in the trademark CLICKBANK established through its ownership of the portfolio of service mark registrations described above and its use of the mark in its retail financial services business.
The disputed domain name <clickbank-contracts.com> consists of Complainant’s CLICKBANK trademark, a hyphen, the descriptive term “contracts” and the generic Top Level Domain (gTLD) <.com> extension.
Complainant’s trademark is the initial, distinctive and dominant element in the disputed domain name. The other elements being the hyphen, the descriptive term “contracts” the gTLD <.com> extension provide no distinguishing character to the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the CLICKBANK mark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that Respondent is not commonly known under Complainant’s CLICKBANK mark or any similar name;
· that Respondent is using Complainant’s CLICKBANK mark in the disputed domain name without permission;
· that the disputed domain name is associated with unauthorized and deceptive activity because Respondent is using the disputed domain name as the address of a website to impersonate Complainant;
· that Respondent was aware of Complainant and Complainant’s trademarks prior to its registration of the disputed domain name;
· that not only had Respondent constructive notice of Complainant’s trademarks due to Complainant’s trademark registrations, but Respondent’s website demonstrates actual knowledge of Complainant;
· that Respondent’s website incorporates Complainant’s Stylized “C” registered service mark as well as Complainant’s CLICKBANK mark; mimics Complainant’s origin story; and explicitly states that it formerly “specialized in Affiliated Marketing,” which is part of Complainant’s business and has “developed this new business model with Cryptocurrencies, as we realize how the market trend is.”
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is clear from uncontested evidence on the record that the registrant of the disputed domain name was aware of Complainant and its name and mark when the disputed domain name was chosen and registered. Not only did Complainant’s rights and reputation in the CLICKBANK mark predate the registration of the disputed domain name but on the balance of probabilities the disputed domain name was created in order to create confusion among Internet users so as to take predatory advantage of Complainants name, mark and goodwill.
Subsequent to its registration, the disputed domain name has been used as the address of Respondent’s website to facilitate the impersonation of Complainant by Respondent. The website to which the disputed domain name resolves is clearly designed to confuse Internet users and mislead them into believing that Respondent’s website and the products that Respondent purports to offer are those of Complainant.
This Panel finds therefore that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of its web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of 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 <clickbank-contracts.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Dated: September 29, 2020
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