CCH Incorporated v. Domain Administrator/ Sugarcane Internet Nigeria Limited
Claim Number: FA2307002052985
Complainant is CCH Incorporated (“Complainant”), represented by Andrew J. Avsec of Crowell & Moring LLP, US. Respondent is Domain Administrator / Sugarcane Internet Nigeria Limited (“Respondent”), NG.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myvitallaw.com>, registered with Internet Domain Service BS Corp.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on July 13, 2023; Forum received payment on July 13, 2023.
On July 14, 2023, Internet Domain Service BS Corp confirmed by e-mail to Forum that the <myvitallaw.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 July 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@myvitallaw.com. Also on July 19, 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 August 9, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant is a leading provider of tax and business law information and software. Complainant has rights in the VITALLAW mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 6,933158, registered May 6, 2021). Respondent’s <myvitallaw.com> domain name is identical or confusingly similar to Complainant’s VITALLAW mark as it incorporates the VITALLAW Mark in its entirety and merely adds the generic word “my” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <myvitallaw.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the VITALLAW mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by intentionally mimicking Complainant’s legitimate website.
Respondent registered and uses the <myvitallaw.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to pass off as Complainant for Respondent’s financial gain. The disputed domain name is used to redirect consumers to competing legal research sites and other paid services., Respondent had actual knowledge of Complainant’s rights to the VITALLAW mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <myvitallaw.com> domain name.
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 asserts rights in the VITALLAW mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 6,933158, registered May 6, 2021). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). 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 Complainant has demonstrated rights in the VITALLAW mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <myvitallaw.com> domain name is identical or confusingly similar to Complainant’s DBT mark as it merely adds the generic word “my” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014)”(Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complaint contends that Respondent is not using the disputed domain name for a bona fide offering of goods or services. Instead, Respondent uses the disputed domain name to divert users away from Complainant’s VITALLAW website by redirecting them to a parking page. The disputed domain name resolves to a parking page containing a link farm that is presumably designed to generate click-through advertising revenue by linking to third-party commercial sites. See PersonalizationMall.co v. Private Registration/ WhoisGuardService.com, FA 1686794 (Forum Sept. 13, 2016) (finding the respondent presumably generates revenue where a parking page site links to third party websites).
Complainant argues that it has not provided a license or permission to Respondent to use the VITALLAW Mark in connection with the disputed domain name. This is evidence that Respondent has no legitimate interest in the disputed domain name. See President & Fellows of Harvard College v. Harvard Professional University/ Educational Services, FA 1873165 (Forum Dec. 24, 2019) (“In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name . . . the respondent may be presumed to lack rights or legitimate interests in the domain name.”).
Complainant also contends that Respondent is not commonly known as “MYVITALLAW.” See Broadcom Corp. v. Ibecom PLC, FA 361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name). The Panel finds that Respondent is not commonly known by the disputed domain name.
The Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent registered the disputed domain name to pass off as Complainant to confuse and mislead users for Respondent’s financial gain. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant by creating a likelihood of confusion for commercial gain can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). Complainant provides screenshots of the resolving webpage of the disputed domain name where Respondent wholly incorporates Complainant’s VITALLAW Mark. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues respondent incorporates the VITALLAW Mark into the confusingly similar disputed domain name to deceive consumers, draw consumers to its site, and then redirect those consumers to other legal research tools, and by doing so profit from their confusion as to the source, sponsorship and endorsement of the website. See Velv, LLC v. AAE, FA 677922 (Forum May 25, 2006) (finding that the respondent’s use of the domain name, containing the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services indicated bad faith under Policy ¶ 4(b)(iv)). This is evidence of bad faith under Policy ¶ 4(b)(iv).
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.
Complainant argues Respondent registered the <myvitallaw.com> domain name with actual knowledge of Complainant’s rights in the VITALLAW mark. Registration of a disputed domain name with knowledge of Complainant’s rights demonstrates bad faith registration and use with regard to Policy ¶ 4(a)(iii). See HDR Global Trading Limited v. John Wilson, FA2109001962334 (Forum Oct. 4, 2021) (finding “[a]ctual knowledge of Complainant’s mark prior to registering the disputed domain name can adequately demonstrate bad faith under Policy ¶ 4(a)(iii).”). On May 6, 2011, Complainant filed an application to register the VITALLAW Mark. On November 1, 2011, Complainant officially launched the VITALLAW platform at the domain name vitallaw.com. On November 2, 2021, the very next day, Respondent registered the disputed domain name.
Complainant contends registration of a disputed domain name on the very next day strongly suggests that Respondent did so opportunistically and with knowledge of Complainant’s rights in its mark. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)).
The Panel finds that Respondent’s action was to unfairly capitalize on Complainant’s rights in the unregistered mark and Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <myvitallaw.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
August 21, 2023
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