ConsumerDirect, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2203001987422
Complainant is ConsumerDirect, Inc. (“Complainant”), represented by Lindy Herman of Rutan & Tucker LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartcredot.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2022; the Forum received payment on March 8, 2022.
On March 9, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <smartcredot.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 March 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2022 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@smartcredot.com. Also on March 10, 2022, 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 April 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant provides credit score management services, assisting with the monitoring of credit reports, managing debt, increasing credit scores, and monitoring fraudulent activity. Complainant asserts rights in the SMARTCREDIT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,068,903, registered on June 2, 2020).
2. Respondent’s <smartcredot.com>[i] domain name is identical or confusingly similar to Complainant’s SMARTCREDIT mark, as it incorporates a misspelled version of the mark, only replacing the “i" with an “o”.
3. Respondent has no rights or legitimate interests in the <smartcredot.com> domain name. Complainant has not authorized or licensed Respondent to use the SMARTCREDIT mark, nor is Respondent commonly known by the domain name.
4. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website attempts to install malware to users’ devices.
5. Respondent registered and uses the domain name in bad faith. Respondent has a long-standing pattern of cybersquatting and registering domain names in bad faith.
6. Additionally, Respondent disrupts Complainant’s business and attempts to attract users for commercial gain by using a confusingly similar domain name to redirect users to Respondent’s website.
7. Further, Respondent uses the domain name to install malware in users’ devices.
8. Respondent also engages in typosquatting and had actual knowledge of Complainant’s rights in the SMARTCREDIT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SMARTCREDIT mark. Respondent’s domain name is confusingly similar to Complainant’s SMARTCREDIT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <smartcredot.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in the SMARTCREDIT mark through its registration of the mark with the USPTO (e.g., Reg. No. 6,068,903, registered on June 2, 2020). When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Therefore, Complainant has sufficiently established rights in the SMARTCREDIT mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <smartcredot.com> domain name is identical or confusingly similar to Complainant’s SMARTCREDIT mark, as it incorporates the mark in its entirety, only misspelling the mark and replacing the letters “i” with “o”. Merely misspelling a mark is not sufficient to differentiate the domain name from the mark. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The Panel therefore finds the <smartcredot.com> domain name is identical or confusingly similar to Complainant’s SMARTCREDIT mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <smartcredot.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights and legitimate interests in the <smartcredot.com> domain name because Respondent is not authorized to use the SMARTCREDIT mark, nor is Respondent commonly known by the domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by a domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information indicates Respondent is known as “Carolina Rodrigues / Fundacion Comercio Electronico” and there is no evidence to suggest Complainant authorized Respondent to use the SMARTCREDIT mark. Therefore, Respondent is not commonly known by the <smartcredot.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <smartcredot.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website attempts to install malware in unsuspecting users’ devices. Using a domain name incorporating the mark of another to redirect users to a website that downloads malware is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant has provided evidence that the resolving website, downloads malware onto users’ devices. Thus, the Respondent is not using the <smartcredot.com> domain name in compliance with Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The record supports Complainant’s contention that Respondent has a history of registering domain names in bad faith. That constitutes bad faith. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Accordingly, the Panel holds that Respondent has engaged in bad faith per Policy ¶ 4(b)(ii).
Complainant states Respondent had actual notice of Complainant’s rights in the SMARTCREDIT mark. Registering a domain name with actual notice of a complainant’s rights in a mark constitutes bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel finds that the misspelled version of the mark SMARTCREDIT is sufficient evidence to show actual notice; thus, the Panel holds that Respondent acted in bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <smartcredot.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 18, 2022
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