The Complainant is Intertex, Inc. of Azusa, California, United States of America (“United States”), represented by Ourfalian & Ourfalian, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Shant Moughalian, Contess, Inc. of San Dimas, California, United States. 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 June 16, 2017. On June 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 June 20, 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 June 22, 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 June 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on July 19, 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, a California corporation, manufactures and sells a line of electric air blowers, electric fans, inflatable publicity objects, decorative mobiles, and advertising balloons under the SKYERZ trademark. The Complainant owns a United States trademark registration for SKYERZ, issued by the United States Patent and Trademark Office (“USPTO”) on April 12, 2016. The Complainant’s trademark application was filed on March 18, 2015, and first used in commerce on September 1, 2013.
The disputed domain name, , was registered on September 21, 2012, according to the concerned Registrar’s WhoIs records. The Respondent is a former employee of the Complainant, hired in 2004 to conduct marketing. His employment was terminated in 2015. While employed by the Complainant, the Respondent registered various domain names at the direction of the Complainant, including the disputed domain name. However, unbeknownst to the Complainant, the Respondent either registered these domain names under his personal name or later changed the registration to his personal name. The disputed domain name currently resolves to a website with advertising links to third party sites offering various products, including inflatable advertising products that compete with those of the Complainant.
The Complainant on March 7, 2017, filed a UDRP complaint against the same Respondent named herein, seeking transfer of the domain names , , and , which correspond to registered trademarks owned by the Complainant. See INTERTEX, Inc. v. Shant Moughalian, Contess, Inc., WIPO Case No. D2017-0480. The panel found that the Respondent without the Complainant’s authorization had either registered the domain names , , and in his personal name or later changed the registrations to his personal name, and held that the Respondent had registered and was using the disputed domain names in bad faith. The panel ordered that the domain names be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to its SKYERZ mark. The Complainant asserts that the Respondent has fraudulently taken control and ownership of the disputed domain name, and is using the disputed domain name to divert consumers to a webpage providing links to other websites where products competing with those of the Complainant are sold, as well as other products. The Complainant submits that the Respondent thus is preventing the Complainant from using its own domain name and trademark, and that consumers encountering the Respondent’s webpage are likely to be misled to believe that the Complainant is no longer offering its own SKYERZ branded goods.
In light of the foregoing, the Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not been authorized to use the Complainant’s SKYERZ mark, and that the Respondent has not been commonly known by the disputed domain name. The Complainant further asserts that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent since the termination of his employment with the Complainant has engaged in a pattern of registering domain names that are identical to registered trademarks owned by the Complainant, including SKYERZ, GRIZZLYTARPS, BLUEDRI, and SOLEAIRE. The Complainant submits the Respondent, who is now a competitor, fraudulently acquired these domain names primarily for the purpose of disrupting the Complainant’s business. The Complainant further maintains that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to other online locations by creating a likelihood of confusion with the Complainant’s SKYERZ mark as to the source, sponsorship, affiliation or endorsement of the products and services offered thereon. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See “Final Report of the First WIPO Internet Domain Name Process”, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
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, previous UDRP 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) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the 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. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s SKYERZ mark,1 in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s SKYERZ mark is clearly recognizable in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing has been made under paragraph 4(a)(ii) of the Policy. It is undisputed that the Respondent has not been authorized to use the Complainant’s SKYERZ mark. The disputed domain name nonetheless incorporates the Complainant’s mark in its entirety, was registered by the Respondent in circumstances strongly suggesting fraud, and resolves to a website with advertising links to third party sites offering various products, including products competitive to those offered by the Complainant.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
As previously noted, the Respondent is a former employee of the Complainant, hired to conduct marketing. He was directed by the Complainant to register the disputed domain name. Without the Complainant’s knowledge or authorization, the Respondent either registered the disputed domain name under his name or later changed the registration to his name. The disputed domain name resolves to a website with links to third party sites offering products that compete with those of the Complainant.
Having regard to the relevant circumstances in this case, and absent any explanation from the Respondent, the Panel finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. To the contrary, based on the record before the Panel, the Respondent misappropriated the disputed domain name, which is identical to the Complainant’s SKYERZ mark, to prevent the Complainant from reflecting its mark in a corresponding domain name and to divert Internet users seeking the Complainant’s products to a website on which competing products are offered. Nor given the foregoing is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, has not been commonly known by the disputed domain name, and has not otherwise demonstrated rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The record reflects that the Respondent has engaged in a pattern of intentionally misappropriating domain names that correspond to the Complainant’s registered trademarks – including the SKYERZ mark. The circumstances strongly suggest that the Respondent registered the disputed domain name and the domain names that were the subject of INTERTEX, Inc. v. Shant Moughalian, Contess, Inc., supra, primarily for the purpose of disrupting the Complainant’s business. Further, the Panel considers that the Respondent has intentionally attempted for commercial gain to attract Internet users to the Respondent’s website 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 the products or services offered thereon.
The Panel notes that the disputed domain name was registered on September 21, 2012, prior to the Complainant’s application to register the SKYERZ mark on March 18, 2015, and before September 1, 2013, the earliest use date identified by the Complainant. However, the Respondent was an employee of the Complainant from 2004 through 2015, responsible for marketing. Given the nature of the Respondent’s employment, the Panel concludes that the Respondent most likely knew of the Complainant’s prospective trademark rights when registering the disputed domain name and sought unfairly to capitalize thereon. See WIPO Overview 3.0, section 3.8 and decisions cited therein.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: August 2, 2017
1 Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Full & Egal Universal Law Academy