The Complainant is The Rocket Science Group LLC of Atlanta, United States of America ("United States" or "US"), represented by Domgate, France.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Ejikeme Princely, Gnet Production of Sango Ota, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 14, 2017. On January 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2017, the Registrar transmitted by email to the Center its verification response 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 the Complainant on January 18, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2017.
The Center verified that the Complaint together with the amended 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 January 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 15, 2017.
The Center appointed Mihaela Maravela as the sole panelist in this matter on February 28, 2017. 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 is the holder of various trademarks MAILCHIMP around the world for use in connection with an email marketing service founded in 2001. The Complainant has invested important amounts of time and money in developing and marketing its email services in order to become the world leader of email marketing solutions. In 2014, it was sending over 10 billion emails per month on behalf of its users. In 2016 MailChimp was ranked number 7 on the Forbes Cloud 100 list, which recognizes the top 100 private cloud companies in the world. As a result, the trademark MAILCHIMP registered for email marketing services acquired a very strong notoriety worldwide.
The Complainant adduced evidence of the trademark registrations that include:
- US registration No. 3501244 MAILCHIMP (world mark) registered on September 16, 2008,
- International Trademark No. 1227222 MAILCHIMP (world mark) registered on August 6, 2014.
The disputed domain name was registered on September 13, 2016 and at the date of the Complaint it resolves to a parking page. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar with the prior marks of Complainant, insofar as it reproduces integrally the prior mark MAILCHIMP, which have acquired a high level of distinctiveness. The only difference consists of the adjunction of the suffix "com" that is merely intended to confusingly lead Internet users to think that the domain name consists of the Complainant's trademark, on the one hand, and of the generic Top-Level domain ("gTLD") itself, on the second hand. Moreover, the gTLD ".com" it is reproduced twice side by side, so that Internet users clearly recognize it as such independently from the trademark MAILCHIMP.
In addition, the Complainant argues that to the best of its knowledge, the Respondent does not have any rights in the name "mailchimp". The Complainant has not authorized Respondent's use of its trademark and has no affiliation with the Respondent.
The Complainant further shows that the Respondent has registered and is using the disputed domain name with bad faith. The Respondent chose to register the disputed domain name for the purpose of confusing users into believing that it is associated with the Complainant and redirecting traffic to the Respondent's parking page in order to obtain pay-per-click revenue. The Respondent has registered the disputed domain name in bad faith for the purpose of selling it to the Complainant in excess of its out-of-pocket expenses directly related to the disputed domain name. Moreover, the Respondent has engaged in a pattern of such conduct. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable", paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of 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
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Here, the Complainant has demonstrated its ownership of trademark in MAILCHIMP mentioned above.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks of the Complainant.
UDRP panels treat the first element of a UDRP complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name"; some panels refer as well to the "overall impression" created by the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
Numerous UDRP decisions have recognized that incorporating a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to that registered trademark. (See Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617).
Here the disputed domain name incorporates the trademark MAILCHIMP of the Complainant, followed by the suffix "com", with the addition of the gTLD ".com".
As held by previous panels in similar cases, the addition of the element "com" within the disputed domain name does not dispel any confusing similarity between the disputed domain name and the Complainant's trademark (Aldermore Bank Plc v. Hildegard Gruener, supra; Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler,WIPO Case No. D2016-1357).
It is also well accepted by UDRP panels that a gTLD, such as ".com", is typically ignored when assessing identity or confusing similarity between a trademark and a disputed domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states: "[…] 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 […]".
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademark MAILCHIMP, and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name "mailchimp". See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910.
The Panel therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the registration and use of the domain name in bad faith.
The fact that the disputed domain name is confusingly similar with the Complainant's trademarks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain name indicate not only that the Respondent was aware of the Complainant's business and trademarks at the time of registration, but also that the Respondent registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant's services.
The Complainant's MAILCHIMP trademark, included in the disputed domain name, has been used in commerce for almost 15 years prior to the registration of the disputed domain name, such that it is unlikely that Respondent was unaware of Complainant's rights when it registered the disputed domain name. See Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray,WIPO Case No. D2016-0062.
The Respondent provided no explanations for why it registered the disputed domain name.
The Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio,WIPO Case No. D2016-0186.
Furthermore the Respondent availed of a privacy shield service to protect its identity. While the use of a privacy shield is not in any way objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use (Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler,WIPO Case No. D2016-1357).
Moreover, the disputed domain name is used by the Respondent to operate a parking page where the Internet users can find numerous links to companies operating in the same business area as the Complainant: email marketing. It is very likely that this parking page provides revenues to the Respondent, who is therefore trading off the reputation of the Complainant's trademarks (Hermès International v. Whois privacy services provided by DomainProtect LLC / Domain Administrator, Internetconsult Ltd,WIPO Case No. D2011-2146).
In the Panel's view these circumstances represent evidence of registration and use in bad faith of the disputed domain name by the Respondent.
Consequently, the Panel ascertains 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.
Mihaela Maravela
Sole Panelist
Date: March 14, 2017
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