4IMPRINT, INC. v. richard olivo / rockpoint apparel inc.
Claim Number: FA2104001942146
Complainant is 4IMPRINT, INC. (“Complainant”), represented by Joseph S. Heino of Davis & Kuelthau, Wisconsin, USA. Respondent is richard olivo / rockpoint apparel inc. (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4imprintpromo.com>, registered with GoDaddy.com, LLC.
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 20, 2021; the Forum received payment on April 20, 2021.
On April 21, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <4imprintpromo.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 April 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@4imprintpromo.com. Also on April 22, 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 17, 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’s business is focused on making the process of buying promotional products easier and less expensive for its customers. It sells a range of promotional items — everything from giveaways, to embroidered apparel, to trade show displays and beautiful logo’d business gifts. Complainant has rights in the trademark 4IMPRINT through its use in commerce since 1999 and its registration with the United States Patent and Trademark Office (“USPTO”) in 2001). Respondent’s <4imprintpromo.com> domain name, registered on March 4, 2020, is confusingly similar to Complainant’s 4IMPRINT mark.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the 4IMPRINT mark. Respondent has not used the <4imprintpromo.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or made a fair use thereof as Respondent is using the <4imprintpromo.com> domain name to compete with Complainant, first by redirecting users to its own commercial site and, more recently, to display monetized links to third party businesses in the same field of commerce as Complainant.
Respondent registered and uses the <4imprintpromo.com> domain name in bad faith. Respondent has used the <4imprintpromo.com> domain name to attract internet traffic for commercial gain.
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 4IMPRINT mark through Complainant’s registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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).”). Therefore, the Panel finds that Complainant has demonstrated rights in the 4IMPRINT mark per Policy ¶ 4(a)(i).
Complainant asserts that the <4imprintpromo.com> domain name is confusingly similar to Complainant’s 4IMPRINT. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Here, Complainant notes that Respondent incorporates the entirety of the 4IMPRINT mark as the dominant portion of the domain name and only adds the descriptive word “promo”. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 names 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 <4imprintpromo.com> domain name as Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed to Respondent any rights in the 4IMPRINT mark. In considering this issue, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain names where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.) Additionally, lack of authorization to use a mark may constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information provided by the registrar names the registrant as “Richard Olivo/ Rockpoint Apparel Inc”. There is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the 4IMPRINT mark and Respondent has provided no additional evidence of its identity. Additionally, the Complainant argues that it did not give the Respondent any authorization to use their 4IMPRINT mark. In light of the available evidence, there is no ground upon which the Panel can find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <4imprintpromo.com> domain name in connection with a bona fide offering of goods or services or that it makes a legitimate noncommercial or fair use thereof as Respondent uses the <4imprintpromo.com> domain name to pursue competing businesses. A respondent using a confusingly similar domain name to promote a business that competes with a complainant may not be making 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.”) See also Hackensack Meridian Health, Inc. v. Alma Cantara, FA 1941397 (Forum May 17, 2021) (“Using the at-issue domain names to present monetized advertisements that redirect internet users to various third parties, as does Respondent, indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant claims that the <4imprintpromo.com> domain name initially redirected to the Respondent’s own website, but, following receipt of a cease and desist letter, Respondent shifted its use of the disputed domain name to the hosting of a variety of pay-per-click hyperlinks that connect users to competing businesses. As Complainant has provided no evidence to support the redirection of the disputed domain name to Respondent’s own website, the Panel is not in a position to consider this claim. However, Complainant submits into evidence a screenshot of the <4imprintpromo.com> website showing pay-per-click links with titles such as “Custom Promotional Products”, “Promotional Pens”, and “Promotional Bags”, all of which appear to compete in Complainant’s own field of business. Therefore, the Panel finds that Complainant has made a prima facie case 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 under Policy ¶ 4(c)(i) or (iii). As Respondent has not filed a Response or made any other submission in this case, it does not rebut this prima facie case.
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its 4IMPRINT mark at the time it registered the <4imprintpromo.com> domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”). While Complainant submits a copy of its USPTO registration certificate for the 4IMPRINT mark and includes quotes from the “Our History” page of its own <4imprint.com> website, such evidence, alone, typically does not support the conclusion that the asserted mark has gained notoriety with the public or that a domain name registrant actually knew of the mark at the time the disputed domain name was registered. UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge."). Furthermore, apart from statements in the Complaint that are supposedly copied from its own website (screenshots of which were not submitted), Complainant submits no evidence regarding the actual use, scope, or reputation of its 4IMPRINT mark. However, Complainant does note that Respondent, also based in the United States, is in a promotional goods business that competes with Complainant uses the disputed domain name to resolve to monetized links to third-party businesses which also compete with Complainant. This tips the balance of probabilities over to the conclusion that the Respondent most likley had knowledge of and was targeting the 4IMPRINT mark at the time it registered the <4imprintpromo.com> domain name. Respondent has not appeared in these proceedings and so it does not contest this conclusion.
Complainant does argue that Respondent registered and uses the <4imprintpromo.com> domain name in bad faith as Respondent has used the <4imprintpromo.com> domain name to attract internet traffic for commercial gain through the use of competing hyperlinks. A Respondent attracting internet traffic for commercial gain through the use of competing hyperlinks may be indicative of bad faith per Policy ¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Here, the Complainant contends that the <4imprintpromo.com> domain name resolves to a website that offers links to competing businesses, from which the Complainant is assumed to collect revenue and, in support, it provides a screenshot of Respondent’s website. Respondent has not participated in this case and so it offers no alternate explanation for its actions. Therefore, by a preponderance of the evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per ¶ 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 <4imprintpromo.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 18, 2021
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