Complainants are j2 Cloud Services, Inc. of Los Angeles, California, United States of America ("U.S."), and j2 Global Holdings Ltd. of Dublin, Ireland, represented by CSC Digital Brand Services AB, of Stockholm Sweden.
Respondent is DSGS DSGS / DSGS of Las Vegas, Nevada, U.S. 2. The Domain Name and Registrar
The disputed domain names and (the "Disputed Domain Names") are registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2015. On October 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 15, 2015, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on October 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 16, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 25, 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 Complaint states that j2 Global Holdings Ltd. is an affiliate of j2 Cloud Services, Inc. Both entities are referred to in the Complaint collectively as "Complainants." Accordingly, the Panel will do the same.
Complainants state that their "ultimate corporate parent" is j2 Global, Inc., which "provides cloud-based, business-critical communications and data management services through its various wholly owned subsidiaries… through a global network that spans across 50 countries on six continents… [s]erving millions of subscribers worldwide." Complainants further state that "EFAX" is the "flagship brand… owned by Complainants who, in conjunction with their global affiliates, offer Internet fax services around the world under the EFAX Marks [defined below]. EFAX has been the world's number one online fax service for the past twenty years. More than 11 million customers, who range from individual clients to multi-user enterprise accounts, use the EFAX services to send and receive faxes online".
Complainants further state, and provide evidence to support, that they (or, apparently, their related entities) are the owners of numerous trademark registrations in the U.S., Canada and the European Union for marks that consist of EFAX, including U.S. Reg. No. 3,930,343 for EFAX, for use in connection with, inter alia, "[e]lectronic transmission of facsimile communications and data" (first used in commerce in April 1989; registered on March 15, 2011). These registrations are referred to herein as the "EFAX Marks".
The Disputed Domain Names were created on June 27, 2015, and are being used in connection with monetized parking pages, at least one of which contains links to services related to Complainants, including links labeled "Efax Free Account" and "How to Send an Efax".
Complainants further state, and provide evidence to support, that it sent letters to Respondent on July 17, 2015; July 27, 2015; and August 6, 2015, regarding the Disputed Domain Names, but Respondent has not replied. 5. Parties' Contentions A. Complainant
Complainants contend, in relevant part, as follows:
- The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights because, inter alia, "[w]here, as here, a disputed domain name encompasses and captures a complainant's trademark in its entirety, past Panels have established that the disputed domain name is confusingly similar to that trademark."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, "Respondent is not sponsored by or affiliated with Complainants… in any way"; "Complainants have not given Respondent permission to use the EFAX Marks in any manner, including in domain names"; "Respondent is not commonly known by the Disputed Domain Names"; and "[p]rior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name".
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, "the EFAX Marks are so closely linked and associated with Complainants that Respondent's use of this identical mark in the Disputed Domain Names strongly implies bad faith registration"; "Respondent creates a likelihood of confusion with Complainants and their EFAX Marks by registering a domain that contains the Complainants' EFAX Mark in its entirety, with nothing added to distinguish the Disputed Domain Name from Complainants' EFAX Marks"; Respondent's "failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name"; and "it is more likely than not that the Respondent knew of and targeted Complainants' EFAX Marks". B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainants are required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainants, it is apparent that Complainants have rights in and to the EFAX Marks.
As to whether the Disputed Domain Names are identical or confusingly similar to the EFAX Marks, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., "efax"), as it is well-established that the Top-Level Domain (i.e., ".life" and ".world") may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
Given that the second-level portion of each of the Disputed Domain Names is identical to the EFAX Marks, it is self-evident that each of the Disputed Domain Names is identical or confusingly similar to the EFAX Marks for purposes of the Policy.
Accordingly, the Panel finds that Complainants have proven the first element of the Policy. B. Rights or Legitimate Interests
Complainants have argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not sponsored by or affiliated with Complainants… in any way"; "Complainants have not given Respondent permission to use the EFAX Marks in any manner, including in domain names"; "Respondent is not commonly known by the Disputed Domain Names"; and "[p]rior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name".
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP". WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainants have established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainants have satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 trademark 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 has registered the domain name in order to prevent the owner of the trademark 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 has 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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Both of the Disputed Domain Names are being used by Respondent in connection with monetized parking pages, at least one of which displays links for services related to the EFAX Marks. Numerous panels have found such conduct to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
While it is unclear whether the websites associated with both of the Disputed Domain Names contain such related links, the Panel need not rely on these monetized parking pages – regardless of the text in the links that appear therein – to find bad faith. As the Complainants have argued, numerous decisions under the Policy have found bad faith where, as where, "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law". Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The EFAX Marks appear to have a strong reputation and are widely known; Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Disputed Domain Names; and Respondent seems to have taken active steps to conceal its true identity, by operating under a name that apparently is not a registered business name.1
Accordingly, the Panel finds that Complainant has proven the third element 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 Disputed Domain Names and be transferred to Complainants.2
Douglas M. Isenberg
Sole Panelist
Date: December 1, 2015
1 Indeed, the name "DSGS DSGS" is "highly suspicious and unbelievable". HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. dsfgsdfgsdfgdsfg,WIPO Case No. D2015-0916.
2 Because the Complaint did not indicate which of the Complainants should be the recipient of the transfer, the Panel makes no determination on that issue and instead defers to the Complainants to make such an election at the time of transfer.
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