FPK Services, LLC d/b/a STDCheck.com v. MICHAEL DUBENDRIS / RUMMEX
Claim Number: FA1504001612859
Complainant is FPK Services, LLC d/b/a STDCheck.com (“Complainant”), represented by Brett E. Lewis of Lewis & Lin LLC, New York, USA. Respondent is MICHAEL DUBENDRIS / RUMMEX (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stdchecks.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2015; the Forum received payment on April 3, 2015.
On April 6, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <stdchecks.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2015 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@stdchecks.com. Also on April 8, 2015, 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.
A timely Response was received and determined to be complete on April 27, 2015.
Complainant’s timely additional submission was received and determined to be complete on May 1, 2015.
On May 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant has common law rights in the STDCHECK mark. Respondent’s <stdchecks.com> domain name is confusingly similar to Complainant’s mark because the domain simply adds the letter “s” to the end of the mark and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <stdchecks.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized to register the STDCHECK mark in a domain name. An affiliate agreement existed between Complainant and Respondent until July 2014, when it was terminated upon Complainant learning of violations of the affiliate program. Respondent has continuously used the <stdchecks.com> domain name to offer identical services as Complainant, constituting neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
3. Respondent has used the <stdchecks.com> domain name in bad faith. Respondent has attempted to divert Internet users to its own website, and away from Complainant’s website, constituting bad faith disruption under Policy ¶ 4(b)(iii). Respondent has used the confusingly similar domain name in an attempt to attract Internet users to its site for commercial gain, trading off the goodwill associated with the STDCHECK mark and the confusion as to the source, sponsorship, or affiliation with Complainant under Policy ¶ 4(b)(iv). Lastly, due to its involvement in Complainant’s affiliate program, Respondent registered the <stdchecks.com> domain name with actual or constructive knowledge of the STDCHECK mark and Complainant’s rights in the mark.
B. Respondent’s Contentions
1. Respondent registered the <stdchecks.com> domain name in good
faith.
2. The <stdchecks.com> domain name is comprised of generic terms in
which Complainant cannot assert rights.
3. Complainant is reverse domain name hijacking through this dispute.
4. The Panel notes that the <stdchecks.com> domain name was
registered on April 11, 2014.
1. Respondent’s <stdchecks.com> domain name is confusingly similar to Complainant’s STDCHECK mark.
2. Respondent does not have any rights or legitimate interests in the <stdchecks.com> domain name.
3. Respondent registered or used the <stdchecks.com> 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.
The Panel sees that Complainant has no registration for the STDCHECK mark with the United States Patent and Trademark Office, or any other entity. Prior panels have found that a registration is not necessary in order to establish rights in a given mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). For the purpose of establishing rights in the STDCHECK mark, the Panel evaluates Complainant’s claims of common law rights.
Complainant argues that although it has not registered the STDCHECK mark with any governmental authority, it has established common law rights in the STDCHECK mark dating back to first use in commerce in August 2012. Complainant states that it has continuously used the STDCHECK mark since that date in affiliation with its website <stdcheck.com>, its software, and website services. The Panel finds Complainant’s contentions to be sufficient, and the Panel concludes that Complainant has established common law rights by showing the STDCHECK mark has taken on a secondary meaning in association with Complainant’s business. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Traditionally, a secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Here, Complainant includes an Affidavit of Fiyyaz Pirani attached as Annex 4, in which it is affirmed that Complainant has used the STDCHECK mark associated with its website continuously and extensively in connection with the provision of online testing services. Further, it is affirmed that Complainant has promoted its mark in commerce, spending $150,000.00 on advertising and marketing its services every month. See Compl., at Attached Annex 4, ¶¶ 4-12 (enumeration of expenditures regarding advertising and media recognition). The Panel therefore concludes that Complainant has established a secondary meaning in the STDCHECK mark.
Next, Complainant asserts that Respondent’s <stdchecks.com> domain name is confusingly similar to Complainant’s mark because the domain simply adds the letter “s” to the end of the mark and the gTLD “.com.” Panels have seen such alterations to a fully incorporated mark in which a complainant has rights fails to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, this Panel agrees that the <stdchecks.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
While Respondent contends that the <stdchecks.com> domain name is comprised of common and generic terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <stdchecks.com> domain name. Complainant posits that Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized to register the STDCHECK mark in a domain name. In light of the available evidence, the Panel finds no basis in concluding Respondent as having been commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Next, Complainant contends that Respondent is a former affiliate of complainant, who operated under an entity named “Rummex LLC.” On January 8, 2014 Respondent executed an affiliate agreement with Complainant. See Compl., at Attached Ex. 4. Respondent’s request to offer services identical to Complainant’s was denied when Respondent refused to agree to the license agreement provided by Complainant. Id. In July 2014, Respondent was terminated from Complainant’s affiliate program. Id. Complainant provides that Respondent’s resolving website continues to claim ownership of the services offered, which are identical to Complainant’s services. See Compl., at Attached Ex. 6. Panels have found competing use through confusingly similar domain names is insufficient to substantiate rights under Policy ¶ 4(c)(i) and (iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, this Panel agrees that Respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use via Policy ¶ 4(c)(i) and (iii).
Complainant argues that Respondent has attempted to divert Internet users to its own website, and away from Complainant’s website subsequent to the affiliate agreement being terminated, constituting bad faith disruption under Policy ¶ 4(b)(iii). Compare Compl., at Attached Ex. 5 (resolving page of Complainant’s <stdcheck.com>); with Compl., at Attached Ex. 6 (resolving page of Respondent’s <stdchecks.com>). In light of the available evidence, the Panel concludes that Respondent is operating a confusingly similar website which offers identical services to Complainant to disrupt Complainant’s business practices pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Additionally, Complainant contends that Respondent has used the confusingly similar domain name in an attempt to attract Internet users to its site for commercial gain, trading off the goodwill associated with the STDCHECK mark and the confusion as to the source, sponsorship, or affiliation with Complainant under Policy ¶ 4(b)(iv). See Compl., at Attached Ex. 6. Complainant asserts that even after the affiliate agreement was dissolved, Respondent continued using the disputed domain name to provide identical services as Complainant. Id. The panel in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) found bad faith under Policy ¶ 4(b)(iv) “where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark.” This Panel similarly finds that Respondent in the current case purported to host a commercial website offering similar services offered by Complainant under the STDCHECK mark in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent registered the <stdchecks.com> domain name with actual or constructive knowledge of the STDCHECK mark and Complainant’s rights in the mark. Complainant asserts that, due to Respondent’s involvement with Complainant’s well-known affiliate program, Respondent must have had constructive knowledge of Complainant's rights in the STDCHECK mark when Respondent registered the disputed domain name. Complainant further argues that the advertisements for sexually transmitted disease testing services, which are the same types of services offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the <stdchecks.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <stdchecks.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 20, 2015
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