SIMPLISAFE, INC. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2305002043857
Complainant is SIMPLISAFE, INC. (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf (“Respondent”), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplisafe.us.com> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
Complainant submitted a Complaint to Forum electronically on May 10, 2023; Forum received payment on May 10, 2023.
On May 11, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <simplisafe.us.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 the CentralNic Dispute Resolution Policy (the “CDRP Policy” or “Policy”).
On May 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2023 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@simplisafe.us.com. Also on May 17, 2023, 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 June 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, 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, SimpliSafe, Inc., is an American home security company that produces and sells self-installed wireless security systems. Complainant asserts rights to the SIMPLISAFE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,747,810, registered on June 2, 2015) and other trademark offices worldwide. Respondent’s <simplisafe.us.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the SIMPLISAFE mark in its entirety, merely adding the country code top-level domain (“ccTLD”) “.us” and the generic top-level domain (“gTLD”) “.com” to form the Domain Name.
Respondent does not have rights or legitimate interests in the <simplisafe.us.com> domain name. Respondent is not licensed or authorized to use Complainant’s SIMPLISAFE mark and is not commonly known by the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to host a pay-per-click hyperlink that redirects users to an Amazon site offering Complainant’s goods with an Amazon Affiliate Redirect Link. Additionally, Respondent uses the Domain Name to pass off as Complainant. Furthermore, Respondent has configured the MX servers for the Domain Name, allowing it to be used for an email phishing scheme.
Respondent registered and uses the <simplisafe.us.com> domain name in bad faith. Respondent registered and uses the Domain Name to sell products and services that compete with Complainant. Additionally, Respondent registered and uses the Domain Name to pass off as Complainant. Furthermore, Respondent’s use of a privacy service in registering the Domain Name shows bad faith registration and use. Finally, Respondent registered and uses the Domain Name with actual knowledge of Complainant’s rights in the SIMPLISAFE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SIMPLISAFE mark. The Domain Name is identical to Complainant’s SIMPLISAFE 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 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 SIMPLISAFE mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 4,747,810, registered on June 2, 2015). Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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).”).
The Panel finds that the <simplisafe.us.com> domain name is identical to the SIMPLISAFE mark as it merely adds the “us.com” TLD to Complainant’s wholly incorporated SIMPLISAFE mark. The addition of a top-level domain (“TLD”) is insufficient to distinguish a domain from a mark under Policy ¶ 4(a)(i). See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
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.
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 SIMPLISAFE 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 “Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf” 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 which, through the reproduction of the SIMPLISAFE mark and copyrighted material from the Complainant’s official website (including material that describes the Complainant) passes itself off as an official website of the Complainant but actually operated as a mechanism to encourage visitors to click on hyperlinks (for which the Respondent was likely to receive revenue) allowing uses to purchase both the Complainant’s products and competing products through third party retailers (the Amazon Affiliate program). This is not a bona fide offering or a legitimate noncommercial or fair use. See MTD Products Inc v. Abdullah Mahmud Ashik / SARDAH.COM, FA 1832254 (Forum Apr. 4, 2019) (finding lack of rights or interests in similar circumstances; Amazon Technologies, Inc. v. David Sutton, FA 1795497 (Forum July 30, 2018) (finding lack of rights or legitimate interests where domain name was used to promote competing products, presumably generating referral fees for respondent) and Talecris Biotherapeutics, Inc. v. Marketing Total S.A., FA 1169821 (Forum May 1, 2008) (finding lack of rights or legitimate interests where domain name was used for sole purpose of generating referral fees from third-party advertisements and links, some of which competed directly with Complainant).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, September 23, 2022, Respondent had actual knowledge of Complainant’s SIMPLISAFE mark since the website to which the Domain Name resolves passes itself off as an official website of the Complainant including reproducing material from the Complainant’s official website and making repeated references to Complainant. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that consist of of the SIMPLISAFE mark and use it to redirect visitors to a website offering pay-per-click links to a website selling the Complainant’s goods and goods that compete with Complainant other than to take advantage of Complainant’s reputation in the SIMPLISAFE mark. 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 that Respondent registered and uses the Domain Name in bad faith in order to resolve to a website that passes off as an official website of Complainant and provides a series of pay-per-click links for which Respondent would be expected to receive revenue. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated 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 <simplisafe.us.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 12, 2023
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