The Complainant is Telephone and Data Systems, Inc. of Chicago, Illinois, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Marc Corinth of Austin, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2016. On June 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2016 the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2016.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 2, 2016. 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 Complainant, a United States company, provides hybrid information technology solutions, including hosting and cloud solutions, tailored for mid-market and enterprise companies. The Complainant has furnished those services under the ONENECK service mark since 2001, having obtained registrations with the United States Patent and Trademark Office ("USPTO") for that mark (e.g., Registration No. 2596135; registered on July 16, 2002).
The disputed domain name, , is owned by the Respondent and was registered on February 17, 2016. The disputed domain name is attached to a website that features links to the websites of third parties. 5. Parties' Contentions A. Complainant
- The Complainant, a United States company, was founded in 1969. In 2011, the Complainant acquired, as a subsidiary, another United States company, founded in 1997, that had developed hybrid IT solutions, including hosting and cloud solutions, tailored for mid-market and enterprise companies. That second company has offered its services under the ONENECK mark, which the Complainant now owns.
- The ONENECK service mark is registered with various jurisdictions, including with the USPTO. Nearly 550 people in the United States are employed in connection with the services rendered under that mark. The Complainant has spent considerable sums of money in the promotion of its mark. Also, it owns and operates under the domain name .
- The disputed domain name, , contains the Complainant's ONENECK service mark in its entirety and is thus identical to that mark. The addition of the generic Top-Level Domain ("gTLD"), ".cloud", does not mitigate the confusing similarity between the name and the mark.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored or affiliated with the Complainant, nor has the Complainant granted the Respondent permission to use the ONENECK mark. The Respondent is not commonly known as the disputed domain name. The Respondent uses the name to host a website that offers links to third party websites, presumably for pay-per-click fees. Such use does not constitute a bona fide offering of goods or services.
- The disputed domain name was registered and is being used in bad faith. Due to its international fame and use since 2001, the Complainant's ONENECK service mark was certainly known to the Respondent. Whether the Respondent's participation in the pay-per-click links placed on its website is passive or chosen deliberately, the Respondent's resulting commercial gain, arising from confusion with the Complainant's mark, is indicative of bad faith registration and use of the disputed domain name.
- The Respondent's failure to respond to communications from the Complainant regarding the disputed domain name is further evidence of bad faith. Given all of the facts, the Respondent more than likely targeted the Complainant's service mark for bad faith purposes. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name, , provided that the Complainant proves:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted evidence of its registration with the USPTO for the ONENECK service mark. Consequently, the Panel concludes that the Complainant possesses the required rights in that mark for the purposes of Policy, paragraph 4(a)(i). See, The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448 ("The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO."); and The SANS Institute v. WhoisGuard,WIPO Case No. 2007-0426 ("Complainant has established rights in the SANS mark through registration with the USPTO.").
The Panel believes that the disputed domain name, , is identical to the ONENECK service mark. The main portion of the disputed domain name, "oneneck", contains exactly the same letters, in the same order, as ONENECK. The addition of the gTLD, ".cloud", offers no distinction. Moreover, as placement in the "cloud" is now recognized as a storage method for computer-generated materials, that term would have an implied connection with any domain name prefix to which it might be attached as a gTLD. See, Philip Morris USA Inc. v. Dusan Vanek,WIPO Case No. D2016-0908 (finding to be identical to the MARLBORO mark); and COMUTO v. Este sas di S. Terracina & C. Societa/Ditta,WIPO Case No. D2016-0758 (which found to be virtually identical to the mark, BLABLACAR).
Accordingly, the Panel finds that the Complainant has succeeded in establishing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant avers that there is no business connection between it and the Respondent, and that the Respondent has been granted no permission to use the ONENECK service mark. Moreover, the Panel found above that the disputed domain name is identical to that mark. Therefore, the Complainant has put forth a prima facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name. The burden now falls upon the Respondent to rebut that case. See, Philip Morris USA Inc. v. yfmg,WIPO Case No. D2010-0058 ("Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name."); and Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 ("...once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the [disputed] Domain Name.").
Failing to file in this case, the Respondent has submitted no evidence to rebut the Complainant's prima facie case. Furthermore, the Panel can detect no other evidence in the record to sustain such a rebuttal. The Panel finds no reasonable basis to conclude that the Respondent, Marc Corinth, is commonly known as , rendering Policy, paragraph 4(c)(ii) inapplicable to this case. Also, the Panel accepts the Complainant's uncontested assertion that the disputed domain name is used by the Respondent to collect pay-per-click fees through third party links placed on the website to which the disputed domain name resolves. In the Panel's view, such use is neither a "bona fide offering of goods or services" per Policy, paragraph 4(c)(i) nor a "legitimate noncommercial or fair use" of the name per Policy, paragraph 4(c)(iii). See, Lardi Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1437; and CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark,WIPO Case No. D2004-0330 ("Respondent has not used the domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use. Click-through links to other websites is not enough to show a bona fide offering...").
Accordingly, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Policy, paragraph 4(b)(iv) stipulates that a circumstance giving rise to a finding of bad faith registration and use of a disputed domain name would entail evidence that a respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating the likelihood of confusion between that name and a complainant's mark as to the source, sponsorship, affiliation or endorsement of said website.
As noted in the previous section, the Panel accepts the Complainant's uncontested claim that the Respondent is using the disputed domain name to collect pay-per-click fees from third party links placed on the Respondent's website, to which the disputed domain name resolves. Given that the Panel has found the disputed domain name to be identical to the Complainant's service mark, the Panel is of the opinion that it is the Respondent's intention to derive such commercial gain based upon the likely confusion between the disputed domain name and the mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. Therefore, the Panel determines that the Respondent has registered and is using the disputed domain name in bad faith per Policy, paragraph 4(b)(iv). See, Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258 ("While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use."); and L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623 ("Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy...").
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being 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 disputed domain name, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: August 16, 2016
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