GoTo Technologies USA, Inc. v. PERFECT PRIVACY, LLC
Claim Number: FA2207002005970
Complainant is GoTo Technologies USA, Inc. (“Complainant”), represented by Christopher Hoolehan of Day Pitney LLP, Massachusetts, USA. Respondent is PERFECT PRIVACY, LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <logmein.us.com>, registered with Network Solutions, 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.
Nicholas J.T. Smith as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on July 6, 2022.
Complainant submitted a Complaint to the Forum electronically on July 27, 2022; the Forum received payment on July 27, 2022.
On July 28, 2022, Network Solutions, LLC confirmed by e-mail to the Forum that the <logmein.us.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy” or “Policy”).
On July 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@logmein.us.com. Also on July 28, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, 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, GoTo Technologies USA, Inc., offers computer software and software services including remote IT support. Complainant has rights in the LOGMEIN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,093,930 registered May 16 2006). Respondent’s <logmein.us.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the LOGMEIN mark in its entirety and adds the “.us” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <logmein.us.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the LOGMEIN mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Name resolves to a competing website.
Respondent registered and uses the <logmein.us.com> domain name in bad faith. Respondent registered the Domain Name in order to divert customers for commercial gain. Additionally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the LOGMEIN mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On June 29, 2022 Respondent sent a message to the Forum, the relevant portion being extracted below:
“We are by all means willing to mediate and sell this domain to Go To Technologies and remove any MX records. This is a very old domain of ours that we would use to have people jump to our remote service tools.
Can we begin the process of mediation to transfer domain or shall I engage my attorney next to more formally respond to this?”
In certain cases where the Respondent has clearly consented to the transfer of the Domain Name to the Complainant, the Panel is authorized to forgo traditional Policy analysis. In the present case, while the Respondent is willing to enter into mediation “to transfer domain” it is not clear whether they are prepared to consent to the transfer of the Domain Name to the Complainant without payment and as such it is not appropriate to issue an order for relief without being satisfied that the elements of the CDRP are satisfied.
Complainant holds trademark rights for the LOGMEIN mark. The Domain Name is identical to Complainant’s LOGMEIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used 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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a formal 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 LOGMEIN mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 3,093,930 registered May 16, 2006). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <logmein.us.com> domain name is identical to the LOGMEIN mark as it consists of the LOGMEIN mark and adds the “.us.com” TLD. Adding a TLD to a wholly incorporated trademark does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case and the Respondent’s informal Response, consisting of an unsworn e-mail without evidence does not show that it has rights or legitimate interests in the Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the LOGMEIN mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also 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). The WHOIS lists “PERFECT PRIVACY, LLC” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website (“Respondent’s Website”), apparently operated by a third party, which purports to offer IT consulting services, including helpdesk support, under a different trade mark. Respondent uses the Domain Name for a website that offers services in competition with the Complainant, who offers software tools and services that are connected to IT management and IT support. The use of a confusingly similar domain name to resolve to a webpage that offers goods or services in competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Domain Name consists of an ordinary phrase (“log me in”). As such the Panel acknowledges there is a possibility that Respondent could have registered the Domain Name (at the time of registration, July 7, 2008) in the absence of knowledge of Complainant for a purpose corresponding to its descriptive meaning, and indeed the informal Response suggests as much. However, the informal Response consists of an unsworn e-mail with no documentary evidence to support the claimed intention. The Panel is entitled to accept all reasonable allegations set forth in a complaint and in the absence of evidence in the unsworn informal Response to support Respondent’s claim, the Panel finds, on the balance of probabilities, that the Respondent was aware of the Complainant and the services provided under the LOGMEIN mark at the time of registration.
The Complainant had used the LOGMEIN mark for a number of years at the time of the registration of the Domain Name and had developed a reputation in that mark; it is unlikely that Respondent, that both competed with Complainant and offered services for which Complainant’s software was commonly used, would have registered the Domain Name absent any awareness of Complainant. This is supported by the use of the Domain Name, which simply refers to the Respondent’s Website, which advertises its services under an unrelated mark, rather than any particular website offering assistance to consumers of IT services seeking that Respondent log into their systems to resolve their IT issues. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds on the balance of probabilities that Respondent registered and uses the Domain Name in bad faith to create a false association with Complainant’s LOGMEIN mark for commercial gain by using the confusingly similar Domain Name to resolve to a website offering IT management and support services in competition with the services offered by Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (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).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
The Panel while noting that the Policy only requires that a complainant show that a respondent registered or used a domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <logmein.us.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 22, 2022
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