The Complainant is Affinion Publishing, LLC of Stamford, Connecticut, United States of America (“United States”), represented by Davis & Gilbert LLP, United States.
The Respondent is Sean Crockett of Dover, New Hampshire, United States. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with L Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2015. On September 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2015.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on October 7, 2015. 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
The date of the Domain Name registration was confirmed by the Registrar to be October 24, 2013. The Complainant provided evidence of multiple trademark registrations for the mark SHOPPERS ADVANTAGE including, inter alia, United States Trademark, No. 1,352,175 (registered on July 30, 1985) and United States Trademark, No. 2,459,577, (registered on June 12, 2001) that predate the date of the Domain Name registration for a variety of related services.
The Domain Name previously resolved to a website for a competing business. The Panel conducted an independent search to determine that the Domain Name currently resolves to a webpage which appears to be inactive and which contains a security alert.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant’s mark, as well as other statements regarding correspondence between the parties, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant
The Complainant alleges that Affinion Group Holdings, Inc. (through its predecessors) was formed in 1973. The Complainant further alleges that Affinion Group Holdings is the parent corporation of both Affinion Publishing, LLC and Trilegiant Corporation (collectively, “Affinion”). Through Trilegiant Corporation, Affinion operates a business by the name of “Shoppers Advantage,” with a website located at “”.
The Complainant also alleges that Shoppers Advantage is a leading membership club that offers discounted shopping and loyalty perks (such as cash back and extended warranties) to over 500,000 active members, including by means of its website. Affinion has been operating the Shoppers Advantage program and using the name “Shoppers Advantage” for over thirty years, and has built a strong reputation and significant goodwill in the “Shoppers Advantage” name.
The Complainant alleges that it sent the Respondent a cease and desist letter on November 18, 2013 and followed up with another letter on July 19, 2015. The Complainant alleges, “Through various e-mails between July 10 and July 15, 2015, Respondent alerted Affinion’s counsel that he would discontinue active use of the ‘www.’ and the business found there. However, Respondent stated that ‘if [Affinion] want[s] my domain, they’re going to have to pay for it.’ A copy of this email is attached to [the] Complaint as Annex 6. As of September 1, 2015, there is no active website found at ‘www.’. However, the Domain Name has still not been transferred and respondent is still seeking payment for its transfer.” Further, the Complainant alleges actual consumer confusion.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark SHOPPERS ADVANTAGE, in respect of a wide range of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic word “club” at the end does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant further contends that the Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for SHOPPERS ADVANTAGE.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the generic word “club” at the end of the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. Indeed, since the Complainant is a “club”, it does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark, and if anything, enhances it.
See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating, “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name, that the Respondent is not related to or affiliated in any way with the Complainant, and that the Complainant has not authorized the Respondent to use its marks.
Further, prior UDRP panels have ruled that “[t]he fact that Respondent offered to sell the domain name registrations to Complainant is evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy paragraph 4(a)(ii).” Lockheed Martin Corporation v. Allen Jarosz,WIPO Case No. D2005-0361.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark SHOPPERS ADVANTAGE and that the continued holding of the Domain Name is in bad faith.
The Domain Name fully incorporates the Complainant’s trademark SHOPPERS ADVANTAGE. The only difference between the Domain Name and the Complainant’s widely known SHOPPERS ADVANTAGE mark is the addition of the word “club”, which is descriptive of the Complainant’s business. The use of such a highly confusingly similar domain name for a competing business is paradigmatic bad faith as captured in paragraph 4(b)(iv) of the Policy. Against this backdrop, and noting particularly the Respondent’s offer for sale, the current passive holding of the Domain Name is also in bad faith.
Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name, its prior use, and the offer for sale, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 the Complainant.
Ellen B. Shankman
Sole Panelist
Date: October 19, 2015
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