The Complainant is InsiderAdvantage, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Gary Guerrero of Naples, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2018, 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 8, 2018, 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 13, 2018.
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 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on July 16, 2018. 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 a media publisher that provides information and commentary on government, politics and other local events primarily in Georgia. The Complainant launched its business in 1999 as “InsiderAdvantage” and asserts common law trademark rights in INSIDERADVANTAGE, INSIDERADVANTAGE.COM, and INSIDERADVANTAGEGEORGIA (collectively referred to as the Complainant’s “INSIDERADVANTAGE marks”). The Complainant on December 16, 1999, applied to the United States Patent and Trademark Office (USPTO) to register the marks INSIDERADVANTAGE and INSIDERADVANTAGE.COM for “Providing online information in the field of government, namely, providing a website containing information concerning legislation, and federal, state and local governmental affairs.”
The Complainant’s INSIDERADVANTAGE and INSIDERADVANTAGE.COM marks were registered on July 23, 2002 (U.S. Reg. Nos. 2598655 and 2598652 respectively). However, the USPTO subsequently cancelled the Complainant’s INSIDERADVANTAGE and INSIDERADVANTAGE.COM registrations on March 1, 2013, after finding the declarations of use submitted by the Respondent for renewal of the marks under Section 8 the United States Trademark Act to be unacceptable.
The Respondent is the current registrant of the disputed domain name and appears to have registered the disputed domain name on April 12, 2018, according to the Registrar’s WhoIs records. The Complainant previously had registered on April 11, 2005, renewing the registration and using the disputed domain name until April 11, 2015, at which time the Complainant failed to renew the domain name registration. The Complainant maintains that the lapse in the registration occurred through oversight, but in any event the disputed domain name subsequently was registered by the Respondent.1 The disputed domain name currently resolves to a website on which the Respondent has reproduced copyrighted content previously published on the Complainant’s Insider Advantage Georgia website during February 2010 and March 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has obtained common law trademark rights in INSIDERADVANTAGE, INSIDERADVANTAGE.COM, and INSIDERADVANTAGEGEORGIA dating back as early as 1999. The Complainant further notes that for a period of time it also achieved United States trademark registrations for the INSIDERADVANTAGE and INSIDERADVANTAGE.COM marks. The Complainant maintains that by the time the Respondent registered the disputed domain name the INSIDERADVANTAGE marks had acquired distinctiveness due to significant marketing and use in commerce.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s distinctive INSIDERADVANTAGE marks as the disputed domain name wholly incorporates the INSIDERADVANTAGE marks and is being used to display InsiderAdvantage content and copyrighted material generated by the Complainant for its own websites.
The Complainant maintains that the Respondent has no rights or legitimate interests regarding the disputed domain name. The Complainant submits there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain name or has acquired any trademark or service mark rights, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Complainant emphasizes that the only material on the Respondent’s website is copyrighted material generated by the Complainant for use on the Complainant’s websites.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent is leveraging the goodwill and reputation of the Complainant’s INSIDERADVANTAGE marks to divert web traffic that would be looking for the Complainant’s media services. The Complainant emphasizes that at the time of the Respondent’s registration of the disputed domain name the Complainant’s INSIDERADVANTAGE mark was in use and had acquired distinctiveness, and submits on this basis that the Respondent registered the disputed domain name with full knowledge of the Complainant’s rights. According to the Complainant, prior UDRP panels have held that both actual and constructive knowledge of a complainant’s rights at the time of registration of a domain name constitute strong evidence of bad faith.
The Complainant further submits that the Respondent has passively held the disputed domain name since its registration and asserts that passive holding of a domain name is evidence of registration and use of the domain name in bad faith. The Complainant reiterates that the content on the Respondent’s website is content created and owned by the Complainant. 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 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy 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 are 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, 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 a right or legitimate interest 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 initially addresses whether the Complainant has established rights in its INSIDERADVANTAGE marks for purposes of paragraph 4(a)(i) of the Policy. The term “trademark or service mark” as used in the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
Given the USPTO’s cancellation of the Complainant’s INSIDERADVANTAGE and INSIDERADVANTAGE.COM registrations, the Complainant must demonstrate unregistered or common law trademark rights the INSIDERADVANTAGE marks. A complainant may establish unregistered or common law trademark rights in a mark when as a result of continuous and substantially exclusive use in commerce the mark comes to be recognized by the public as a distinctive identifier of the complainant’s goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.5.2. Relevant evidence demonstrating such acquired distinctiveness (or “secondary meaning”) includes a range of factors such as (i) the duration and use of the mark; (ii) the amount of sales under the mark; (iii) the nature and extent of advertising using the mark; (iv) the degree of actual public recognition; and (v) consumer surveys. See WIPO Overview 3.0, section 1.3 and cases cited therein.
The Panel concludes from its review of the record that a relevant segment of the public has come to recognize the INSIDERADVANTAGE marks as source identifiers for the Complainant’s media services. In addition, the Respondent’s targeting of the Complainant, as discussed below, further supports the conclusion that the Complainant’s INSIDERADVANTAGE marks have achieved significance as source identifiers. See WIPO Overview 3.0, section 1.3.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s INSIDERADVANTAGEGEORGIA mark and confusingly similar to the Complainant’s INSIDERADVANTAGE and INSIDERADVANTAGE.COM marks. 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 INSIDERADVANTAGE marks are clearly recognizable in the disputed domain name.3 While the content of the website associated with a disputed domain name is typically disregarded by UDRP panels when assessing confusing similarity under the first element, the Panel also notes that given the Respondent’s website content, the disputed domain name appears calculated to play off of the confusing similarity of the disputed domain name with the Complainant’s INSIDERADVANTAGE marks, and indicates targeting of the Complainant’s marks by the Respondent.4
Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5
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, the burden of production shifts 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 under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s INSIDERADVANTAGE marks. The Respondent notwithstanding has registered the disputed domain name, which is identical and confusingly similar to the Complainant’s marks. As noted earlier, the Respondent has used the disputed domain name consistent with the targeting of the Complainant’s marks, reproducing on its website content previously published by the Complainant on its Insider Advantage Georgia website between February 2010 and March 2010, essentially impersonating the Complainant.
Pursuant to paragraph 4(c) of the Policy, a 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 it 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 come forward with any evidence of rights or legitimate interests in the disputed domain name. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s marks, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of 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 Panel considers that the Respondent was aware of and had the Complainant’s INSIDERADVANTAGE marks in mind when registering the disputed domain name. The Respondent in all likelihood is seeking to exploit and profit from the Complainant’s INSIDERADVANTAGE marks, using the disputed domain name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s opportunistic registration and subsequent use of the disputed domain name constitutes bad faith.
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: July 30, 2018
1 Perfect Privacy LLC, initially named as the Respondent in the Complaint, appears to be a privacy protection service. Gary Guerrero is the sole respondent identified in the amended Complaint.
2 See WIPO Overview 3.0, section 1.7.
3 When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.15.
5 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
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