Complainant is Constant Contact, Inc. of Waltham Massachusetts,United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC. United States of America.
Respondent is Domain Hostmaster, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia/ 經常接觸 of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2013. On December 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant January 8, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 13, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 10, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on February 27, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel issued a Procedural Order No. 1 on March 6, 2014 in which it invited Complainant to comment on the following two issues:
(i) when the disputed domain name was discovered by Complainant; and
(ii) in view of the disputed domain name having been registered on May 1, 2001, why the Complaint was filed only in December 2013.
Complainant filed a response to the Procedural Order on March 11, 2014 within the deadline stipulated by the Panel. Respondent did not file any comment in response which Panel invited it to, by the deadline of March 17, 2014. 4. Factual Background
Complainant states that it was incorporated as Roving Software Incorporated in 1995. It began operations in 1998 and in the same year started offering its services under the name “Constant Contact”. Complainant has since grown from a small start-up to a leading provider of email marketing, social media marketing, event marketing and online survey tools, as well as expert personal coaching and support, for small businesses, associations and non-profit organizations.
Complainant changed its formal name to Constant Contact, Inc. in 2006. In October 2007, Complainant had its initial public offering and today has a customer base of more than 500,000 worldwide. Complainant assists small organizations with access to the latest industry information and education to help them learn email marketing, social media marketing, event marketing and online survey best practices.
Complainant has ranked on Deloitte’s Technology Fast 500 for five years running, most recently in position 179.
Complainant submitted evidence of four U.S. federal trademark registrations for marks that consist of or contain the words CONSTANT CONTACT. The earliest registration dates from July 4, 2000 and the date of first use is reflected on the trademarks register as February 1, 1998.
Complainant operates a website at the domain name which was registered on September 29, 1998.
Respondent registered the disputed domain name on May 1, 2001. 5. Parties’ Contentions A. Complainant
(1) The disputed domain name is identical to Complainant’s CONSTANT CONTACT trade mark in which it has rights. The only difference between the disputed domain name and the CONSTANT CONTACT trade mark lies in the addition of the letter “s” at the end of the disputed domain name. Complainant submits on the basis of past UDRP panel decisions that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity, and that the letter “s” is of a minor difference and irrelevant in the consideration of the issue of consuming similarity under the Policy.
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has never assigned, licenced, sold, transferred or in any way authorized Respondent to register or use the CONSTANT CONTACT trade mark. There is no evidence of Respondent having used or made preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Respondent does not appear to have acquired any trademark rights in the disputed domain name nor been commonly known by the disputed domain name.
Respondent has been using the disputed domain name to redirect visitors to a website at “/emailmarketing.php”, which website contains numerous references to Complainant's CONSTANT CONTACT trade mark. This has been done without Complainant’s permission or consent. Respondent’s website links to Complainant’s affiliate program whereas Respondent is not an affiliate of Complainant. Complainant’s affiliate program does not in any case grant affiliates the right to use the CONSTANT CONTACT trade mark as Respondent has done. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, misleadingly to divert consumers or to tarnish Complainant’s CONSTANT CONTACT trade mark. Respondent cannot establish rights or legitimate interests in its use of the disputed domain name in connection with an unauthorized affiliate site.
(3) The disputed domain name was registered and is being used in bad faith. Bad faith is demonstrated in the fact that Respondent is using the disputed domain name in connection with a fully developed commercial website that prominently uses Complainant’s CONSTANT CONTACT trade mark. Respondent’s use of the disputed domain name is likely to confuse consumers into thinking that they have reached the website of Complainant. Respondent’s website to which the disputed domain name resolves contains Complainant’s CONSTANT CONTACT trade mark repeatedly and reproduces the former version of Complainant’s logo.
Bad faith is also evidenced by use of the disputed domain name in connection with an unauthorized affiliate site and by use of the CONSTANT CONTACT trade mark as keywords or “meta tags” in the HTML source code for Respondent’s website.
(4) In connection with the queries raised in Procedural Order No. 1, Complainant asserts that it first became aware of the disputed domain name in March 2011. At that point in time, Complainant suspected but was uncertain that the registrant of the disputed domain name was benefitting from Complainant’s affiliate program by seeking to generate revenue. Complainant was also unable to ascertain the true identity of the registrant to confirm or deny this as the latter was masked by a privacy protection service. It was only on April 24, 2013 that Complainant’s affiliate marketing manager contacted an individual whom Complainant believed might be associated with the disputed domain name, asking for its transfer but Complainant did not receive a response. On October 1, 2013 Complainant received a report from a customer regarding actual confusion relating to the use of the disputed domain name. Complainant therefore filed Complaint less than three months after it first became aware of any actual confusion related to the disputed domain name and less than three years after it became aware of the disputed domain name.
Complainant asserts, notwithstanding, that any delay in filing the Complaint is immaterial as the doctrine or defence of laches does not generally apply under the Policy. Moreover, subsequent to the filing of the Complainant, Respondent took down its website. Such an action constitutes an admission that Respondent lacks rights or legitimate interests in the disputed domain name and that it was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Policy requires Complainant to prove each of the following elements in order to obtain an order in its favour:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has rights in the trade mark CONSTANT CONTACT and it is observed that it has been incorporated in its entirety in the disputed domain name. Additionally, the Panel notes that Complainant’s earliest trademark registration and time of first use of the CONSTANT CONTACT mark date from before the date the disputed domain name was registered. The only differences between the trade mark and the disputed domain name lie in the generic Top Level Domain “.com” and in the additional “s”. The former is of no consequence in the consideration of whether a domain name is identical or confusingly similar to a complainant’s trade mark and the latter is also very minor effect and inadequate to render the disputed domain name non-confusingly similar to the CONSTANT CONTACT trade mark. The Panel therefore finds the disputed domain name essentially identical and/or confusingly similar for the purposes of the Policy.
Accordingly, the Panel finds that Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
On the face of the evidence submitted, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Although it is not in and of itself conclusive in nature, Respondent’s silence in these proceedings as well in apparently taking down its website after the Complaint was filed are indications of a lack of rights or legitimate interests in respect of the disputed domain name. The Panel would expect registrants of domain names to want to defend any adverse claims made against their domain name registrations where they have rights or legitimate interests in them. The Panel draws a negative inference in the circumstances.
In the absence of any response from Respondent, the Panel is unable to find a basis for arriving at a different conclusion and finds for Complainant in respect of the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use can be found to be established in any of the following situations:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the web site or location.
The Panel finds that the third element of paragraph 4(a) of the Policy has been established by Complainant.
The fact that Respondent’s website reproduced Complainant’s former logo clearly betrays the fact that Respondent knew of Complainant and its trade marks when it registered the disputed domain name and sought to use the disputed domain name for the aim described in paragraph 4(b)(iv) of the Policy. This fact coupled with Respondent’s failure to file any response in these proceedings and the taking down of its website leads to the Panel’s conclusion that the registration and use of the disputed domain name were in bad faith.
On the issue of laches, the Panel does not find that there has been any inordinate delay on Complainant’s part in filing the Complaint and, in any event, abides by the consensus view expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition, paragraph 4.10, that “[...] the doctrine or defense of laches [...] does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.” Hence, the Panel does not perceive there to be any applicable defence or other factor which should cause it to arrive at a different conclusion on the matter before it. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: March 25, 2014
Full & Egal Universal Law Academy