NextLevel Internet, Inc. v. Andrew Shepherd
Claim Number: FA2102001933778
Complainant is NextLevel Internet, Inc. (“Complainant”), represented by Barbara L Friedman of Donahue Fitzgerald, California, USA. Respondent is Andrew Shepherd (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nextlevelinternetllc.com>, registered with Register.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2021; the Forum received payment on February 26, 2021.
On March 3, 2021, Register.com, Inc. confirmed by e-mail to the Forum that the <nextlevelinternetllc.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 March 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2021 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@nextlevelinternetllc.com. Also on March 3, 2021, 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 March 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, NextLevel Internet, Inc., operates a technology company offering telecommunication, cloud hosting, ISP services, and other related computer services over the internet. Complainant has rights in the trademark NEXTLEVEL through its use in commerce since 1999 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2019. Respondent’s <nextlevelinternetllc.com> domain name, registered on June 19, 2020, is confusingly similar to Complainant’s NEXTLEVEL mark, only differing by the addition of the generic terms “internet” and “LLC” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <nextlevelinternetllc.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor a licensee of the NEXTLEVEL mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof. Instead, Respondent attempts to pass itself off as Complainant to compete with Complainant as another high-speed internet service provider.
Respondent registered and uses the <nextlevelinternetllc.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by offering competing services under a confusingly similar domain name and a website that mimics the graphics used in Complainant’s own site. Additionally, Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the NEXTLEVEL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 and evidence 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 and supported 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 asserts rights in the NEXTLEVEL mark through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is typically sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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).”). Complainant provides copies of its USPTO registration certificates and so the Panel therefore finds that Complainant has rights in the NEXTLEVEL mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nextlevelinternetllc.com> domain name is confusingly similar to Complainant’s NEXTLEVEL mark, only differing by the addition of the generic terms “internet” and “LLC” while also attaching the “.com” gTLD. Such changes do not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i), especially when the term further links a domain name to Complainant. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 lacks rights and legitimate interests in the <nextlevelinternetllc.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the NEXTLEVEL mark. In considering this issue, relevant WHOIS information may suggest that a Respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See 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). Here, the WHOIS information of record indicates that the registrant utilized a privacy service, as the registrant is listed as “PERFECT PRIVACY, LLC”. However, the registrar for the disputed domain name identified the registrant of the disputed domain name as “Andrew Shepherd,” the named Respondent in this proceeding. Respondent has not filed a Response or otherwise made any submission in this case. Based upon the complete case file as presented, the Panel finds no evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the <nextlevelinternetllc.com> domain name for any bona fide offer of goods or services, nor does it make any legitimate noncommercial or fair use thereof, but rather diverts Internet users to its confusingly similar website where it offers internet services that compete with similar services provided by Complainant. Previous Panels have held that using a disputed domain name to compete with a complainant’s business does not qualify as a bona fide offer of goods or services, nor can it be a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”) This is closely related to a claim of passing off where a respondent seeks to imitate a complainant’s website and confuse users into believing that respondent’s services originate from, or are authorized by that complainant. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Here, Complainant provides screenshots of the home page for the <nextlevelinternetllc.com> domain name, which displays the name “NextLevel Internet Solutions LLC” and purports to offer “High Speed Internet Anywhere.” The page also uses certain blue-and-white graphics which, though not identical to those appearing on Complainant’s own website, are remarkably similar thereto. This does not provide Respondent with any support for a claim under Policy ¶¶ 4(c)(i) or (iii).
Thus, the Panel finds that Complainant has made out a prima facie case which has not been rebutted by Respondent. Upon a preponderance of the evidence in this case, the Panel holds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends that “Respondent had at least constructive, if not actual notice of Complainant’s rights in the NEXTLEVEL and NEXTLEVEL INTERNET marks prior to its registration of the domain name.” While UDRP case precedent typically declines to find bad faith as a result of constructive knowledge, where the parties are both located in the United States and the complainant has obtained a federal trademark registration predating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice. See WIPO Overview 3.0, par. 3.2.2. Also Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”). As both parties to this dispute are US-based and the doctrine of constructive notice is recognized under US law, the Panel finds it reasonable to apply the principle in this case and finds that Respondent had constructive knowledge of Complainant’s rights in the NEXTLEVEL mark at the time it registered the disputed domain name.
Complainant further asserts that Respondent knew or should have known of the NEXTLEVEL mark at the time it registered the disputed domain name. Actual knowledge is certainly an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant states that there is “extensive goodwill and consumer recognition built up by Complainant through substantial amounts of time and effort in advertising and promotion” of its mark. In support thereof, it submits into evidence samples of its advertisements, social media posts, trade show booth, and screenshots from an internet search for the phrase “NextLevel Internet” showing results that relate exclusively to Complainant. Based on this claim of notoriety, Complainant claims that “Respondent knew, or should have known of the NEXTLEVEL and NEXTLEVEL INTERNET marks and their purpose.” The Panel notes that both parties are in a rather specialized field (providing internet and communication services) and so it seems more likely than not that Respondent had actual knowledge of Complainant. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Further, Complainant hypothesizes that “it is likely that Respondent first attempted to seek registration of the <nextlevelinternet.com> domain name and only selected <nextlevelinternetllc> after discovering that it was owned and in use by Complainant.” Considering the common preferences for shorter domain names and for avoiding extraneous terms such as “LLC”, this suggestion seems quite reasonable. The Panel thus finds further support for the claim that Respondent most likely had actual knowledge of Complainant’s rights in the NEXTLEVEL mark at the time that it registered the disputed domain name.
Next, Complainant claims that Respondent registered and uses the <nextlevelinternetllc.com> domain name in bad faith as Respondent diverts Internet users from Complainant’s legitimate website to Respondent’s competing site in pursuit of financial gain. Such use constitutes bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA 1541484 (Forum Feb. 28, 2014) (finding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). As previously noted, Complainant provides screenshots of the resolving website for the disputed domain name which purports to offer high speed internet services to visitors, services which are highly similar to those offered by Complainant.
Complainant also claims that Respondent attempts to pass itself off as Complainant using the <nextlevelinternetllc.com> domain name and that this further demonstrates its bad faith. Previous Panels have found that attempting to pass oneself off as a complainant supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, the resolving website for the <nextlevelinternetllc.com> domain name displays the name “NextLevel Internet Solutions LLC”, offers “High Speed Internet Anywhere” and uses a blue-and-white graphic that is similar to that used on Complainant’s own website, screenshots of which are also provided by Complainant. It is then asserted that “unwary Internet users may arrive at Respondent’s home page and be directed to avail itself of Respondent’s services, and away from NextLevel Internet, despite an initial intent to locate Complainant.” For its part, Respondent has not participated in this case and so it does not refute any of Complainant’s claims or evidence.
Thus, by a preponderance of the evidence presented, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (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 <nextlevelinternetllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 25, 2021
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