Vantage Solutions, LLC v. George Chalhoub / GC GROUP, LLC
Claim Number: FA2104001941498
Complainant is Vantage Solutions, LLC (“Complainant”), represented by Drew M. Smith of Holley & Menker, P.A., Oregon, USA. Respondent is George Chalhoub / GC GROUP, LLC (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <textmechanic.co>, registered with Key-Systems GmbH.
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 April 14, 2021; the Forum received payment on April 14, 2021.
On April 15, 2021, Key-Systems GmbH confirmed by e-mail to the Forum that the <textmechanic.co> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 April 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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@textmechanic.co. Also on April 19, 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 May 14, 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 is in the business of providing Software as a Service (SaaS) in conjunction with language editing and manipulation services including, inter alia, proofreading, substantive editing, and grammar. Complainant has obtained a registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2020 and, through its predecessor-in-interest, developed common law rights in the trademark TEXT MECHANIC based on use in commerce since 2010. Respondent’s <textmechanic.co> domain name, registered on May 5, 2015, is identical to Complainant’s TEXT MECHANIC mark as it appropriates the mark in its entirety and merely adds the country code top level domain (“ccTLD”) “.co”.
Respondent lacks rights or legitimate interests in the <textmechanic.co> domain name. Respondent is not affiliated with Complainant and Complainant has not authorized Respondent’s use of the TEXT MECHANIC mark. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or made a legitimate noncommercial or fair use thereof. Respondent has improperly copied Complainant’s website source code and misrepresented itself as, and used the domain name to compete with Complainant by providing identical services.
Respondent registered and uses the <textmechanic.co> domain name in bad faith. Respondent uses the disputed domain name to impersonate and compete with Complainant. Respondent also uses the disputed domain name to divert internet traffic while falsely promoting an affiliation with Complainant. Finally, Respondent continues to use the disputed domain name despite Complainant’s two submissions of takedown notices under the US Digital Millennium Copyright Act to remove Respondent’s website.
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 same 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 TEXT MECHANIC mark based on the common law and registration of the mark with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark for purposes of this element of 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).”). Since Complainant provides a copy of its USPTO registration certificate for the TEXT MECHANIC mark, the Panel finds that Complainant has rights therein under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <textmechanic.co> domain name is identical to Complainant’s TEXT MECHANIC mark as it appropriates the mark in its entirety, and merely adds the ccTLD “.co.” Adding a ccTLD typically fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Thomson Reuters Global Resources v. Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). As the second level of the disputed domain name copies Complainant’s mark identically and the added “.co” ccTLD does not distinguish the domain name, the Panel finds that the standard of Policy ¶ 4(a)(i) has been met.
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 contends that Respondent lacks rights or legitimate interests in the <textmechanic.co> domain name as Respondent is not affiliated with Complainant, Complainant has not authorized Respondent to use the TEXT MECHANIC mark, and Respondent cannot produce any evidence or reason to suggest that it is commonly known by the disputed domain name. In considering this issue relevant WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as ‘Bhawana Chandel,’ and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”) The WHOIS information for the disputed domain name identifies the registrant as “George Chalhoub / GC GROUP, LLC” and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the TEXT MECHANIC mark. Respondent has filed no Response or made any other submission in this case and so it does not contest Complainant’s assertions. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <textmechanic.co> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to deceive customers and compete with Complainant. Using a disputed domain name to compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See 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.”). Further, copying a complainant’s website source code has been held to be a strong indicator that a respondent lacks rights or legitimate interests. Vivendi Universal Games and Davidson & Associates, Inc. v. Ronald A. Ballard, FA 146621 (Forum Mar. 13, 2002) (holding that wholesale copying of the source code underlying Complainant’s website and exploitation of the goodwill associated therewith was prima facie evidence of a lack of rights and legitimate interests in the disputed domain name.). Here, Complainant provides screenshots showing that Respondent uses the disputed domain name in connection with a website featuring identical text editing and manipulation tools as those offered by Complainant. Also submitted are screenshots indicating that Respondent has copied certain source code from Complainant’s own <textmechanic.com> website and sought to impersonate Complainant on various social media sites by setting up accounts titled “TextMechanic” and posting false statements such as “Our domain name textmechanic.com was stolen, we have moved to textmechanic.co. Please share and tell others.” Respondent does not refute any of this evidence or Complainant’s assertions. As Complainant has made out an unrebutted prima facie case, the Panel find, by a preponderance of the evidence, that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Although not addressed in the Complaint, it is incumbent upon Complainant to show that Respondent most likely knew of the asserted mark at the time that the disputed domain name was registered and that it acted in bad faith. The Panel notes that the disputed domain name was created by Respondent prior to the issuance of Complainant’s USPTO trademark registration. This raises the question of whether Complainant possessed trademark rights which predate the disputed domain name such that Respondent could have known of the mark. When a complainant lacks a registered trademark, common law rights in a mark may satisfy the Policy. See Snap Inc. v. Domain Administrator / Domain Professionals, LLC / Domain Master / Global Personals, LLC / Domain Master / Worldwide Connect Partners, LLC, FA 1933412 (Forum May 11, 2021) (“However, the UDRP does not discriminate between registered and unregistered trademarks and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights in an unregistered trademark as to deserve legal protection, based solely on its use in commerce.”). Here, Complainant submits archived screenshots of its own <textmechanic.com> website from 2010 and 2014 showing that services were provided under the TEXT MECHANIC mark, by its predecessor-in-interest, prior to Respondent’s 2015 registration of the <textmechanic.co> domain name. Respondent does not contest this. As such, the Panel finds that Complainant’s common law trademark rights predate the registration of the disputed domain name. Further, Respondent’s knowledge of Complainant’s mark at the time the disputed domain name was registered may be inferred from Respondent’s actions including its impersonation of Complainant in various social media posts and the content of its <textmechanic.co> website.
Next, Complainant does contend that Respondent registered and uses the <textmechanic.co> domain name in bad faith as Respondent uses the disputed domain name to attract Internet users to Respondent’s website based upon confusion with Complainant’s mark and for Respondent’s commercial gain. Using a disputed domain name to attract Internet users based on confusion can demonstrate bad faith per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Complainant provides screenshots showing that Respondent uses the disputed domain name in connection with a website featuring identical text editing and manipulation tools as those offered by Complainant. Respondent has also copied Complainant’s source code from its <textmechanic.com> website and falsely promoted itself as the rightful owner of the <textmechanic.com> domain name on social media in an attempt to redirect online traffic to its <textmechanic.co> website. Finally, Complainant provides a screenshot of a social media post by a well-known third-party business which demonstrates that Respondent’s use of the disputed domain name has created actual confusion in the marketplace. Respondent has not participated in this case and so provides no rebuttal or other explanation for its actions. Therefore, upon a preponderance of the available evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
It should also be noted that Complainant argues Respondent’s bad faith is further demonstrated through Respondent’s continued use of the <textmechanic.co> in bad faith despite Complainant’s prior takedowns of the website hosted thereon under Section 512(c) of the US Digital Millennium Copyright Act (“DMCA”). Complainant submits evidence showing that two DMCA takedown notices were filed by its predecessor-in-interest, in August 2015 and August 2016, which resulted in the website hosted at the domain name being removed only to have the site reappear with another hosting provider. The Panel finds Respondent’s efforts to re-post its <textmechanic.co> website after removal for intellectual property violations further supports the conclusion that it registered and uses the domain name in bad faith under 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 <textmechanic.co> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 18, 2021
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