Bitly, Inc. v. Chaiyapong Lapliengtrakul / 3DS INTERACTIVE
Claim Number: FA2209002011165
Complainant is Bitly, Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Chaiyapong Lapliengtrakul / 3DS INTERACTIVE (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitly.page>, (‘the Domain Name’) registered with 1API GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on September 7, 2022; Forum received payment on September 7, 2022.
On September 09, 2022, 1API GmbH confirmed by e-mail to Forum that the <bitly.page> Domain Name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API 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 September 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@bitly.page. Also on September 12, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant’s contentions can be summarised as follows:
The Complainant owns the trade mark BIT.LY registered, inter alia, in the USA for computer network address management services with first use recorded as 2008.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s Mark for the purposes of the Policy because it wholly incorporates it and is differentiated from it only by the omission of the period and addition of the gTLD .page.
Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been used for a blank page containing the words ‘I love you by bit.ly’ at the top in plain text. This is not a bona fide offering of goods or services or a legitimate non commercial fair use. It is registration and use in bad faith passively holding the Domain Name and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark BIT.LY registered, inter alia, in the USA for computer network address management services with first use recorded as 2008.
The Domain Name registered in 2019 has been used for a blank page containing the words ‘I love you by bit.ly’ at the top in plain text.
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”).
The Complainant owns the mark BIT.LY registered, inter alia, in the USA for computer network address management services with first use in commerce recorded as 2008.
The Domain Name registered in 2019 contains the Complainant’s mark merely omitting its period and adding the gTLD .page.
The omission of punctuation like periods or ampersands does not prevent confusing similarity between a complainant’s mark and a domain name. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003. The panel held that the deletion of ampersands from the Complainant’s marks did not prevent confusing similarity between them and the Domain Name.) As such the omission of the period from the middle of the Complainant’s mark does not prevent confusing similarity between the latter and the Domain Name.
A gTLD does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). The panel holds that the addition of the gTLD .page does not prevent confusing similarity between the Complainant’s mark and the Domain Name.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Respondent is not authorised by the Complainant and does not appear to be commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
In a previous case where the Domain Name was directed to a blank page displaying the message ‘stop!’ it was held that this was not a bona fide offering of goods or services or a legitimate non commercial or fair use. See Wahl Clipper Corporation v. Theresa W Chavez, FA2111001973154 (Forum December 14, 2021) (“Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names merely resolve to inactive websites displaying the message “Stop!” When Respondent is not using a disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services. [...] Respondent in this case has also used the Domain Name for a blank page, but with the plain text at the top reading ‘I love you by bit.ly’ and thus appears to have not made demonstrable preparations to use the Domain Name since its registration and using the Complainant’s mark including its period in the middle in the effective masthead of the site which otherwise is a holding page. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy 4(c)(i) or (iii).
The Respondent has not answered this Complaint and has not explained why it should be entitled to register a domain name containing the Complainant’s mark which is not a descriptive term and has a reputation for computer network address management services and not make active use of it other than directing it to a blank page containing the words ‘I love you by bit.ly’ using the Complainant’s mark as registered with its period in the middle as part of its masthead.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name, containing a sign confusingly similar to the Complainant’s mark which has a reputation for computer network address management services, is being passively held without any explanation, causing disruption to the Complainant’s business. The Complainant’s mark is distinctive and not a descriptive term. The use of the Complainant’s mark (expressed as registered with its period in the middle) as part of the masthead of the Respondent’s site shows that the Respondent was aware of the Complainant, its rights, mark and services.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) cited in Wahl Clipper Corporation v. Theresa W Chavez FA2111001973154 (Forum December 14, 2021) (where the Panel held that in case of the use of a domain name containing a complainant’s mark with a reputation which had been used for a blank page featuring the message ‘Stop!’ without further explanation that this was unjustified disruption of a complainant’s business where respondent provided no evidence whatsoever of any actual or contemplated good faith.)
As such, the Panel holds that in this similar case the subject of this Complaint the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 <bitly.page> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 10, 2022
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