VOCUS PRW Holdings, LLC v. WhoisGuard Protected c/o WhoisGuard
Claim Number: FA0701000904271
Complainant is VOCUS PRW Holdings, LLC (“Complainant”), represented by Kris
R. Keeney, of Digitalaw,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <freeprweb.com>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@freeprweb.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <freeprweb.com> domain name is confusingly similar to Complainant’s PRWEB mark.
2. Respondent does not have any rights or legitimate interests in the <freeprweb.com> domain name.
3. Respondent registered and used the <freeprweb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VOCUS PRW
Holdings, LLC, provides an effective internet and search engine optimized press
release distribution platform for its clients.
Complainant holds a registered trademark with the United States Patent
and Trademark Office (“USPTO”) for the PRWEB mark (Reg. No. 3,059,865 issued
Respondent, WhoisGuard
Protected c/o WhoisGuard, registered the <freeprweb.com>
domain name on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant’s registration of the PRWEB mark with the USPTO
in February 2006 preceded Respondent’s registration of the <freeprweb.com> domain name in
December 2006. Under Policy ¶ 4(a)(i),
registration of a mark with an appropriate governmental authority such as the
USPTO confers rights in that mark to Complainant. Thus, the Panel finds that Complainant has
established rights in the PRWEB mark pursuant to Policy ¶ 4(a)(i). See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO
Respondent’s <freeprweb.com> domain name contains Complainant’s PRWEB mark in its entirety and adds the generic term “free” as well as the generic top-level domain “.com.” The addition of a generic term such as “free” does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i), and the addition of the generic top-level domain “.com” is without relevance to this analysis. Thus, the Panel finds that Respondent’s <freeprweb.com> domain name is confusingly similar to Complainant’s PRWEB mark pursuant to Policy ¶ 4(a)(i). See The Clorox Co. v. Khesin, FA 154103 (Nat. Arb. Forum May 13, 2003) (finding respondent’s <freereadymop.com> confusingly similar to complainant’s READYMOP mark because “the addition of a descriptive term such as “free” … does not distinguish [r]espondent’s domain name in a manner capable of overcoming a claim of confusing similarity”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <freeprweb.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
There is no evidence in the record indicating that
Respondent is commonly known by the <freeprweb.com>
domain name, and Complainant has alleged that
Respondent has not received permission to use the PRWEB mark. The Panel can find no other evidence in the
record suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is
not commonly known by the <freeprweb.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
Respondent is using the <freeprweb.com> domain name to display a press release
distribution platform that competes with Complainant. Respondent is using Complainant’s PRWEB mark
for its own commercial benefit, and such use does not constitute either a bona fide offering of goods and services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <freeprweb.com> domain name to display a press release
distribution platform that competes with Complainant. Respondent is attempting to disrupt
Complainant’s business by diverting customers to Respondent’s own competing
business. The Panel finds that such
registration and use constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
Respondent’s <freeprweb.com> domain name, which is confusingly similar to Complainant’s PRWEB mark, is likely to cause confusion among customers searching for Complainant’s services. Specifically, customers may mistakenly believe that Respondent’s services are affiliated, endorsed, or sponsored by Complainant. Respondent is attempting to commercially benefit from this likelihood of confusion, and the Panel finds that this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freeprweb.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 8, 2007
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