onXmaps, Inc. v. Online Resource / Online Resource Management Ltd.
Claim Number: FA2009001912323
Complainant is onXmaps, Inc. (“Complainant”), represented by Jeffrey Cadwell of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Online Resource / Online Resource Management Ltd. (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onxhunt.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2020; the Forum received payment on September 15, 2020.
On September 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <onxhunt.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@onxhunt.com. Also on September 16, 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 October 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <onxhunt.com> domain name is confusingly similar to Complainant’s ONX and ONX HUNT marks.
2. Respondent does not have any rights or legitimate interests in the <onxhunt.com> domain name.
3. Respondent registered and uses the <onxhunt.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, onXmaps, Inc., develops GPS electronics for hunters. Complainant holds registrations for the ONX mark with the United States Patent and Trademark Office (“USPTO”) (e.g. ONX Reg. 5,771,278, registered Jun. 4, 2019). Complainant has several pending trademark applications with the USPTO, including one for ONX HUNT. Complainant shows commercial use of the ONX marks dating back to 2013.
Respondent registered the <onxhunt.com> domain name on Dec. 14, 2015, and uses it to feature a popup message directing the user to call a number to resolve an alleged virus on the user’s computer.
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 claims it holds common law rights in the ONX mark dating back to 2013. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to the registration of a disputed domain name if it can demonstrate common law rights in the mark. 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.”). To establish common law rights in a mark, a complainant generally must prove that the mark has taken on a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides evidence that it began using the ONX mark in commerce in 2013, including screenshots of the related website, advertisements and apps on Google, third party articles profiling Complainant’s company between 2013 and 2020. The Panel finds that Complainant has provided ample and uncontroverted evidence to establish common law rights in the ONX marks prior to Respondent’s registration of the disputed domain name.
Respondent’s <onxhunt.com> domain name incorporates Complainant’s ONX mark and adds the descriptive word “hunt”, along with the “.com” gTLD. The Panel notes that Complainant uses the mark ONX HUNT commercially and has a pending USPTO application for that mark. Incorporating a mark in its entirety and adding a descriptive word related to Complainant’s business, along with the “.com” gTLD does not distinguish a disputed domain name from a mark for the purposes of Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). Accordingly, the Panel finds that Respondent’s <onxhunt.com> domain name is confusingly similar to Complainant’s domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <onxhunt.com> domain name, as Respondent is not commonly known by the domain name. Complainant has not licensed or otherwise authorized Respondent to use its ONX or ONX HUNT marks. The WHOIS of record identifies Respondent as “Online Resource Management.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name, and has no rights under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant argues that Respondent does not use the <onxhunt.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent uses the disputed domain name to conduct a fraudulent scheme and provides screenshots of the website at <onxhunt.com>, which features a popup message directing the user to call a number to resolve an alleged virus on the user’s computer. Complainant also provides a screenshot of a fraud tracker website showing that the phone number in the pop up is part of a known scam. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith registration and use is evinced by a pattern of bad faith registration. Past adverse UDRP cases involving Respondent can show bad faith registration and use under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant cites numerous other cases against “Online Resource”, where Respondent was using disputed domain names for the same purpose as it does here, and the domain names transferred. The Panel finds that this is evidence of bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered the <onxhunt.com> domain name in bad faith with actual knowledge of Complainant’s rights in the ONX and ONX HUNT marks at the time of registration. The Panel agrees, relying on Complainant’s uncontroverted evidence of using the marks dating back to 2013, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of 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 did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
Complainant argues that Respondent registered and uses the <onxhunt.com> domain name in bad faith by hosting fraudulent and malicious pop ups at the disputed domain name’s resolving website. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith); see also Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
The Panel finds that Complainant has satisfied 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 <onxhunt.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 10, 2020
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