Outreach Corporation v. Sathish G / Madrid Blues Limited
Claim Number: FA2109001967118
Complainant is Outreach Corporation (“Complainant”), represented by Britt Anderson, California, USA. Respondent is Sathish G / Madrid Blues Limited (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outreachplus.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2021; the Forum received payment on September 30, 2021.
On September 30, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <outreachplus.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 October 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@outreachplus.com. Also on October 7, 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 November 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in OUTREACH. Complainant holds a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used other than for an illegitimate purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides management and marketing software by reference to the trademark, registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 5,313,808 from October 17, 2017;
2. the disputed domain name was registered on October 19, 2013; and
3. there is no association between the parties.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
The disputed domain name takes the trademark to which it adds the generic word, “plus” and the gTLD, “.com”. Those additions are not of any distinctive value and the Panel finds the domain name to be confusingly similar to the trademark (see, for example, MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”)).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. Without in any way detracting from that finding, the Panel finds that this is a convenient point to note that registration of the domain name preceded registration of Complainant’s trademark by four years. It is generally understood that this timing does not affect the paragraph 4(a)(i) analysis and that the relative timing of events is pertinent to the remaining elements of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The Registrar confirmed that the domain name registrant is “Sathish G” which does not indicate that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties.
As stated above, the domain name was registered four years before registration of Complainant’s trademark. Prior registration and use of the domain name may show Respondent to have rights or a legitimate interest in the domain name. Complainant states that upon information and belief, the domain name was purchased by Respondent or Respondent’s predecessor in 2017 and provides evidence that prior to 2017 the name was for sale. Complainant’s evidence is that by at least August 2019 a website resolving from the disputed domain name carried a so-called “Competitor Comparison Chart” where Respondent outlined the differences between Respondent’s OUTREACHPLUS offering and similar services offered by Complainant and by third parties.
The Panel accepts that evidence which, for the purposes of this paragraph 4(a)(ii) analysis, shows that a confusingly similar trademark has been used by Respondent without authorization and in respect of services offered by Complainant. Whatever else may be said of the legitimacy of comparison tables and of using trademarks to identify services for the purposes of comparison, there is no cause for Respondent to use Complainant’s trademark as part of the disputed domain name and in order to attract Internet users to the resolving site. Nor, for the purposes of this paragraph 4(a)(ii) analysis, does the question of when the domain name was registered or acquired by Respondent have impact on that finding. The Panel finds that Respondent has not used the domain name in connection to a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
The Panel finds that a prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
On the evidence already accepted by the Panel, a question may arise under paragraph 4(b) as to whether the domain name was registered in bad faith given that it was created before Complainant established trademark rights. Relevant to that question may be the issues of whether the domain name was first registered by a third party and, if so, the time it was transferred to Respondent. However, those enquiries need not be pursued in this instance since the Panel finds that the matter falls under paragraph 4(b)(iv) above. It will be observed that paragraph 4(b)(iv) stands apart from the other three scenarios insofar as it alone hinges on use, not a state of mind at the time of registration. The Panel has already found the domain name to be confusingly similar to the trademark. The disputed domain name exists for commercial gain in some form or another and the Panel finds that Respondent has used the domain name intending to attract Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <outreachplus.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 5, 2021
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