Complainant is Shawn Dohmen of Honolulu, Hawaii, United States of America, represented by Ryan K. Hew and Denise Wong, United States of America.
Respondent is Web Sales Promotion Group, aka Confluence Consulting Group of McLean, Virginia, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2014. On January 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 February 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2014. On March 3, 2014 Respondent submitted an email with attached evidentiary material related to this proceeding. The Center notified the parties of the commencement of the panel appointment process on March 4, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 10, 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. 4. Factual Background
Complainant owns the mark, ISLE DISCOUNT (Registration No. 4,026,965), registered on September 13, 2011 in International Class 35. The ISLE DISCOUNT mark was first used in commerce on July 1, 2010.
The Domain Name was registered on May 19, 2010. 5. Parties’ Contentions A. Complainant
Complainant states that it is in the business of advertising and business services, namely, promoting the goods and services of others through the distribution of advertising material using a variety of methods including over the Internet. Complainant states that it had agreed to pay Respondent for certain technical services to develop Complainant’s website and certain mobile applications to be associated with Complainant’s ISLE DISCOUNT trademark. However, this work was not completed properly and rather than continue to pay Respondent for mobile applications that were not completed to the required specifications, Complainant informed Respondent that it could keep the mobile applications.
Complainant avers that (1) the Domain Name is identical and/or confusingly similar to the ISLE DISCOUNT mark; (2) Respondent lacks rights or legitimate interests in the Domain Name; and (3) Respondent registered and used the Domain Name in bad faith. (i) Identical or confusingly similar
Complainant contends that Domain Name is identical to its federally registered and incontestable ISLE DISCOUNT mark, in which Complainant has rights. Complainant thus contends that the first element of paragraph 4(a)(i) of the Policy has been established. (ii) Rights or legitimate interests
Complainant explains that it has the burden to show a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, and then the burden shifts to Respondent to establish rights or legitimate interests. Complainant states that it has never authorized Respondent to use its marks and nothing in the record suggests that Respondent has been commonly known by any designation that includes “ISLE DISCOUNT.” The record demonstrates that Complainant hired Respondent to create a website and mobile applications for ISLE DISCOUNT. The evidence demonstrates that Respondent is in the business providing “professional website design services.” There is no evidence demonstrating that Respondent has any rights in the ISLE DISCOUNT mark simply due to a contractual relationship for the development of a website and mobile applications for ISLE DISCOUNT. (iii) Registered and being used in bad faith
Complainant contends that the use to which Respondent has put the Domain Name shows bad faith. First, Respondent “has registered 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 trademark.” As described above, Complainant hired Respondent to create a website and mobile applications for its trademark, ISLE DISCOUNT, and did not authorize any other use of its mark. On December 30, 2013, Respondent offered to sell the Domain Name registration to Complainant, who is the owner of the trademark, for the price of USD 10,109.00. The general offer for sale of a domain name is evidence of bad faith.
Second, Complainant alleges that Respondent “has registered the domain name primarily for the purpose of disrupting the business of a competitor.” As further evidence of bad faith, Respondent has removed the Domain Name from DNS and it essentially doesn’t exist online. Thus, all mobile applications have been disconnected and none of Complainant’s customers can access the mobile applications. Complainant’s business reputation has been severely damaged because the mobile applications are not working due to the Domain Name no longer existing online and therefore current customers and potential customers cannot buy products using the mobile applications. Furthermore, Complainant was required to re-print no less than 100,000 scratch-off cards (gift certificates) with a different domain name. Complainant also had to cancel advertisements for the Domain Name, costing Complainant more than USD 15,000.00. Other business opportunities were terminated due to having to change Complainant’s URL because the Domain Name now does not exist on-line. Accordingly, Complainant avers that he has carried his evidentiary burden under paragraphs 4(b)(i) and (iii). B. Respondent
Respondent did not reply to Complainant’s contentions. However, Respondent did submit an email to the Center, in which it alleged as to Complainant that “they owe us a lot more money” and “[c]ould you please have these money reimbursed to us as soon as possible so we can put this disputed matter to rest.” 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel observes that the only difference between the Domain Name and Complainant’s mark, ISLE DISCOUNT, is the addition of ".com". It is generally accepted that the addition of the applicable top-level suffix in the domain name (e.g., ".com") is to be typically disregarded under the confusing similarity test.
The Panel therefore concludes that the Domain Name is identical or confusingly similar to Complainant’s ISLE DISCOUNT trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant has presented a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. The Panel also finds that Respondent, who did not submit a proper Response, has failed to successfully rebut this showing. The Panel observes that Respondent is not generally known by the Domain Name or authorized by Complainant to use the ISLE DISCOUNT trademark. Complainant hired Respondent to create a website and mobile applications, but there is no evidence demonstrating that Respondent has any rights in the Domain Name or in Complainant’s ISLE DISCOUNT mark as a result of the alleged contractual relationship between the parties. Respondent has submitted an email to the Center asserting that it is owed money from Complainant. However, even if there is a dispute about payment under the alleged service contract between Complainant and Respondent, the Panel determines, on the record before it, that this does not create any rights or legitimate interests on the part of Respondent in the Domain Name.
The Panel accordingly finds that, in the absence of a proper Response submitted in this case, Respondent has failed to show any rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Finally, the Panel finds, on the limited record before it in which Respondent has not submitted a Response, that Complainant has established bad faith registration and use under paragraph 4(a)(iii) of the Policy. Nothing in the available record suggests that Complainant authorized Respondent to register the Domain Name in Respondent’s own name as part of its web design duties. As such, the Panel finds that Respondent’s registration of the Domain Name in its own name was not in good faith. The evidence submitted by Complainant establishes that the Domain Name was registered by Respondent specifically on behalf of Complainant and with Complainant’s ISLE DISCOUNT mark in mind. However, Respondent has refused to transfer the Domain Name to Complainant and has rendered inoperable all of the online operations that were linked to the Domain Name. Respondent appears to be using the Domain Name as leverage in a dispute between the parties, requiring payment from Complainant of a large sum far exceeding the registration costs associated with the Domain Name before it will transfer it to Complainant. In the circumstances of this case, the Panel finds that this use of the Domain Name, which was registered by Respondent specifically for Complainant, constitutes bad faith use of the Domain Name.
This Panel accordingly finds that, for all the foregoing reasons, the Domain Name has been registered and used in bad faith. 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 Domain Name be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: April 1, 2014
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