Complainant is Constant Contact, Inc. of Waltham, Massachusetts, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondents are Bruce Ehlers, LB Ventures, LLC, and Linda Bacon, LB Ventures, LLC, of Rockport, Texas, United States. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 30, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 1, 2019.
The Center verified that the Complaint, together with the amendment to 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 proceedings commenced on February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. On February 22, 2019, the Center received from Respondents a request for extension of the Response due date. Pursuant to paragraph 5(b) of the Rules, the due date for the Response was extended to March 1, 2019. The Response was filed with the Center on March 1, 2019.
On March 6, 2019, the Center received an unsolicited supplemental filing from Complainant. On March 8, 2019, the Center received an unsolicited supplemental filing from Respondent in response to Complainant’s supplemental filing.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 8, 2019. 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
Complainant, Constant Contact, Inc., is a business unit within Endurance International Group Holdings, Inc. (“Endurance”), an international company that provides small business owners with various online tools, such as website hosting and design and email marketing, to maintain an online presence and reach customers. Complainant specializes in email marketing and offers a platform that assists small business owners to create and launch professional marketing campaigns to attract customers and increase revenue. Complainant was founded in 1995 and was acquired by Endurance in November 2015.
Complainant has offered its email marketing products and services under the name and mark CONSTANT CONTACT. Complainant is the owner of a number of trademark registrations for the CONSTANT CONTACT mark in a number of jurisdictions around the world, and, of relevance to this proceeding, in the United States in connection with its services. These include registrations for CONSTANT CONTACT in Classes 9 and 42 (Registration Nos. 2363937 and 3052770, which issued to registration on July 4, 2000, and January 31, 2006, respectively), CONSTANT CONTACT TOOLKIT (Registration No. 4998784, which issued to registration on July 12, 2016), CONSTANT CONTACT HINTS & TIPS (Registration No. 4179792, which issued to registration on July 24, 2012), and CONSTANT CONTACT UNIVERSITY (Registration No. 3761988, which issued to registration on March 23, 2010).
Complainant also owns the domain name which it uses in connection with and to promote its services. Complainant registered the domain name on September 30, 1998. Through Complainant’s website at customers can sign up for Complainant’s services. In addition, Complainant offers a number of partner and agency programs such as an email marketing reseller program. Parties that are interested in partnering with Complainant to offer Complainant’s CONSTANT CONTACT products and services can apply through Complainant’s website at . In order to apply, a party is required to fill out a template providing information about itself and then has to acknowledge by checking a mandatory checkbox that it has read and agrees to a set of Terms and Conditions which are entitled “CONSTANT CONTACT® SOLUTION PROVIDER PARTNER AGREEMENT.”
Respondents are based in the state of Texas, United States, and are affiliated with an entity by the name of LB Ventures, LLC that appears to offer marketing and advertising services. Respondents Bruce Ehlers, LB Ventures, LLC and Linda Bacon, LB Ventures, LLC are hereinafter referred to collectively as “Respondent.”
On October 15, 2018, Respondent Bruce Ehlers on behalf of LB Ventures, LLC applied to become a partner of Complainant to offer CONSTANT CONTACT products and services. A day after LB ventures, LLC entered into a partnership arrangement with Complainant, Respondent registered the disputed domain name .
On October 24, 2018, a representative contacted Respondent Bruce Ehlers regarding the disputed domain name. Mr. Ehlers apparently refused to transfer the domain name and thereafter Mr. Ehlers, or someone acting on behalf of LB ventures, LLC, registered the disputed domain names and . On November 7, 2018, Complainant sent Mr. Ehlers a letter terminating Complainant’s relationship and partner arrangement with Mr. Ehlers and LB Ventures, LLC. That same day, Mr. Ehlers complained on Complainant’s Facebook account that he had been terminated from Complainant’s partner program and that he was offering the disputed domain names for sale. All three disputed domain names were then offered for sale on a webpage at with prices of either USD 10,000 or USD 15,000. The disputed domain names were later advertised for sale on Respondents’ website at “” with opening bids of USD 10,000 each. On November 26, 2018, Mr. Ehlers sent an email to Complainant regarding the disputed domain names and offered to settle the matter by transferring the disputed domain name for USD 9,995. Complainant did not provide a response and the parties had no further direct communications. Respondent currently uses the disputed domain names with webpages promoting email marketing and consulting services. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns rights in the mark CONSTANT CONTACT which it has used since at least 1998, and for which it has obtained numerous trademark registrations in the United States and in several other jurisdictions prior to Respondent registering the disputed domain names.
Complainant argues that the disputed domain names are confusingly similar to Complainant’s CONSTANT CONTACT mark as they each contain in some form the CONSTANT CONTACT mark as a dominant feature. Complainant further argues that the use of the words “email” or “emails” in the disputed domain names does not alleviate the confusing similarity and, in fact, increases the confusing similarity as these words are associated with and describe Complainant’s services.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names as Respondent has offered the disputed domain names for sale to Complainant and is currently using the disputed domain names to advertise email marketing and consulting services, the very services associated with Complainant and its CONSTANT CONTACT mark. Complainant also maintains that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) was never authorized by and never obtained prior approval from Complainant to register or the use the CONSTANT CONTACT mark in the disputed domain names, (ii) has no existing relationship with Complainant, (iii) is not commonly known by any of the disputed domain names, and (iv) has not made any bona fide use of the disputed domain names.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain names in bad faith as Respondent registered the disputed domain names to take advantage of Complainant’s CONSTANT CONTACT mark for Respondent’s own profit and did so after entering into an agreement with Complainant whereby Respondent affirmatively agreed that it would not register and use domain names that included the CONSTANT CONTACT mark without the prior written approval of Complainant. Complainant further contends that Respondent has acted in bad faith by offering the disputed domain names that are based on Complainant’s CONSTANT CONTACT mark for sale at a profit and by using the disputed domain names in connection with websites advertising “Contact Management” and “E-Mail Marketing & Consulting Services.” Finally, Complainant maintains that Respondent’s bad faith is further established by Respondent’s registration of three disputed domain names based on Complainant’s CONSTANT CONTACT mark. B. Respondent
Respondent rejects all of Complainant’s contentions.
Respondent acknowledges that Bruce Ehlers, on behalf of LB Ventures, LLC entered into a partnership agreement with Complainant on October 15, 2018, and that the disputed domain name was registered by Respondent on October 16, 2018. Respondent, however, maintains that the disputed domain name was registered for use with a new business venture using Complainant’s goods and services to support Respondent’s customers for profit. Respondent also asserts that a representative of Complainant was notified by Mr. Ehlers of the acquisition of the disputed domain name and allegedly indicated that he liked the branding. Respondent further maintains that Complainant sent Respondent approximately nine emails to the email address bruce[...]@. Respondent also maintains that it created and started using a webpage at the website promoting Respondent’s services and partnership with Complainant.
Respondent asserts that it started using the disputed domain name on October 24, 2018, for emails it was sending to prospective customers and for a web page regarding Respondent’s services as a reseller/partner of Complainant. Respondent claims that it contacted the account manager that had been assigned to Respondent by Complainant on October 22, 2018, to ask for a change in an email footer identification used by Respondent so that it would show an email address at . Respondent was apparently told on October 24, 2018, that the Legal Department of Complainant would need to approve such a change. At that time, Respondent admits that Mr. Ehlers was told that there was a trademark violation question and that the disputed domain name might have to be transferred to Complainant. According to Respondent, Mr. Ehlers apparently advised that the disputed domain name would not be transferred for free. Respondent thereafter registered the disputed domain names and .
Respondent notes that Complainant terminated the partnership arrangement on November 7, 2018, the grounds for which Respondent vehemently disagreed with. Respondent then wrote to Complainant on November 26, 2018, and offered to settle the matter to avoid litigation.
Respondent argues that based on the foregoing history there is no bad faith registration and use of the disputed domain names. Respondent maintains that it purchased the disputed domain name after becoming Complainant’s reseller to sell and promote Complainant’s services for profit in good faith. Respondent also contends that the disputed domain name was not registered by Respondent for the purpose of selling, renting or transferring this disputed domain to others. As for the and disputed domain names, Respondent maintains that these were registered with a good faith intention as a back-up means of providing online goods and services in Respondent’s new business venture as a partner of Complainant. In that regard, Respondent maintains that these two disputed domain names are not confusingly similar to Complainant’s CONSTANT CONTACT trademark. Finally, Respondent contends that its actions were in good faith as the intent was to use Respondent’s 30 plus years of sales and marketing experience to create a business that would benefit both Respondent and Complainant.
Respondent further argues that the Complaint has been brought in bad faith by Complainant and that Complainant has engaged in reverse domain name hijacking. 6. Preliminary Point Regarding the Parties’ Supplemental Filings
Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, a panel enjoys broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club Ltd. v. John Adem,WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent’s response, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of the Parties’ Supplemental Filings. The Panel therefore declines to accept the Parties’ Supplemental Filings. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns and uses the CONSTANT CONTACT mark, which has been registered and used in the United States and in other jurisdictions well before Respondent registered the disputed domain names.
With Complainant’s rights in the CONSTANT CONTACT mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain “.com”) are identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, each of the disputed domain names essentially consist of or play upon Complainant’s CONSTANT CONTACT mark. The disputed domain name is confusingly similar as it fully incorporates the CONSTANT CONTACT mark at the head of the disputed domain name with the non-distinguishing word “emails.” The disputed domain name is likewise confusingly similar as it is merely a typo version of the CONSTANT CONTACT mark with the non-distinguishing word “emails”. As for the disputed domain name that is likewise confusingly similar as it fully consists of the CONSTANT CONTACT mark, which is easily recognized in the disputed domain name, notwithstanding the use of the word “email” (which relates to Complainant’s very services) to separate the words “constant” and “contact.” The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the CONSTANT CONTACT mark and in showing that the disputed domain names are identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
In assessing whether a respondent has rights or legitimate interests in a disputed domain name, the relevant time for the assessment is the date of the filing of the complaint. See WIPO Overview 3.0 at section 2.11. In this matter, Respondent is currently using the disputed domain names with websites that purport to promote competing email marketing and consulting services, the very services provided by Complainant under its CONSTANT CONTACT mark. Respondent has also listed the disputed domain names for sale at prices starting at USD 10,000. While Respondent had a brief relationship with Complainant from October 15, 2018, through November 7, 2018, that relationship terminated and Respondent has no authorization or permission from Complainant to use the CONSTANT CONTACT mark. The fact that Respondent thereafter refused to transfer the disputed domain names, that are all based on Complainant’s CONSTANT CONTACT mark, unless Complainant paid at least USD 10,000 per disputed domain name, and then publicly listed the disputed domain names for sale and used such to promote a competing business under the CONSTANT CONTACT mark is not a bona fide use and does not support the notion that Respondent has a legitimate interest in the disputed domain name. WIPO Overview 3.0 at Section 2.10 and cases cited therein.
Given that Complainant has established with sufficient evidence that it owns rights in the CONSTANT CONTACT mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. However, unlike the assessment of a respondent’s rights or legitimate interests in a disputed domain name, which have to be assessed at the time of the complaint, the question of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name by the respondent.
Here, Respondent asserts that it registered the disputed domain name a day after it became a partner and reseller of Complainant’s products and services and did so in good faith in furtherance of promoting and selling Complaint’s products and services. Respondent further maintains that an account representative of Complainant was made aware of the acquisition of the disputed domain name and allegedly “indicated that he liked the branding for the new business”. Respondent further maintains that there were multiple emails sent to Mr. Ehlers at the email address of bruce[...]@ and that no objection was received from Complainant.
The issue before the Panel is whether Respondent’s actions were undertaken in good faith and pursuant to the brief reseller relationship Respondent enjoyed with Complainant. Respondent does not deny that it entered into a partnership arrangement with Complainant on October 15, 2018. Complainant has provided evidence from its records that Respondent in fact applied to become a partner/reseller for Complainant on October 15, 2018. In order for Respondent to have applied to become a partner/reseller, Respondent had to not only provide information about itself, but had to a check mandatory box that specifically provided that Respondent had reviewed and was agreeing to Complainant’s terms and conditions which were embodied in a document entitled “CONSTANT CONTACT® SOLUTION PROVIDER AGREEMENT” (the “Agreement”).
The Panel has reviewed the Agreement and notes that while it does not contain a specific provision that proscribes against the registration or use of domain names that consist of the CONSTANT CONTACT mark, the Agreement has several important provisions that specifically apply here. First, the Agreement lists up front in the first section definitions for “Intellectual Property” and “Marks” that make clear that domain names are part and parcel of the Agreement. Second, the Agreement provides that a “Partner” such as Respondent “shall actively promote and market the Products on the Partner Site and in promotional messages to Customers and prospective Customers in accordance with Constant Contact’s then-current policies and requirements” (Section 2.(b)). Third, the Agreement specifies that Complainant owns all rights in its Intellectual Property which includes the CONSTANT CONTACT mark and associated domain names (Section 4 (a) and definitions). Lastly, the Agreement provides that while a “Partner” has a non-exclusive license to use and display the Constant Contact Marks during the term of the Agreement for the purposes and activities related to the Agreement such can only be done “(B) with the prior written approval of Constant Contact in connection with each use, and (C) in accordance with Constant Contact’s standard trademark guidelines or other restrictions imposed by approval” (Section 4(b)(i)).
A fair reading of the Agreement, which Respondent needed to agree to in order to become a partner in the first place, makes clear that Respondent needed to obtain the prior written approval of Complainant for any use of the CONSTANT CONTACT mark in connection with its activities related to the reselling of Complainant’s products and services. While Respondent claims that an account representative was made aware of Respondent’s registration of the disputed domain name after Respondent registered that disputed domain name, there is no evidence in the record showing that Complainant provided a prior written approval as was required or that anyone at Complainant in fact specifically approved the registration and use of that disputed domain name by Respondent. That an account representative may have sent an email to Respondent at [...]@ is not per se a written approval, as it is not clear what the origin of that email might have been. Moreover, the only email provided by Respondent does not show any approval by Complainant or its account representative. What is lacking is any evidence showing approval by Complainant or a specific request by Respondent to register and use domain names based on the CONSTANT CONTACT mark, as required under the Agreement, for use in Respondent’s efforts to promote and sell Complainant’s products and services.
It should also be noted, that this is not a situation where there was no agreement in place between the parties and Respondent was an established reseller of Complainant. WIPO Overview 3.0 at section 2.8.1. Here, an Agreement existed and Respondent registered the disputed domain name a day after being approved as a partner, without approval by Complainant, and before providing any services. Within less than 10 days thereafter Complainant objected to Respondent’s registration of the disputed domain name. Indeed, Respondent admits that its first publicly facing use of the disputed domain name was on October 24, 2018, and that on the same day Respondent was advised of a possible trademark violation. Based on the evidence before the Panel, it seems more likely than not that Respondent chose to ignore the Agreement and registered the disputed domain name as a way to make Respondent’s activities more successful and profitable for Respondent. Put another way, whether or not Respondent’s activities would ultimately benefit Complainant is irrelevant as the issue is simply that Respondent chose to ignore the terms of the Agreement it had to agree to in order to become a partner/reseller of Complainant. It is clear that Complainant had rules and regulations regarding the use of its CONSTANT CONTACT trademark and Respondent simply ignored such and proceeded in a way that would primarily benefit Respondent. Such actions by Respondent do not support Respondent’s claim of having acted in good faith.
Respondent’s bad faith is further demonstrated by Respondent’s actions after it was told on October 24, 2018, that its registration and use of the disputed domain name was a trademark violation and in violation of the Agreement. After being advised of such violations, Respondent then registered the disputed domain names and , both of which are based on Complainant’s CONSTANT CONTACT mark, without any approval from Complainant as was required under the Agreement. Thereafter, even after being terminated on November 7, 2018, as a partner of Complainant, Respondent refused to transfer the disputed domain names to Complainant unless Complainant paid Respondent significant sums for the disputed domain names. In essence, Respondent held the disputed domain names for ransom. When Complainant refused to pay Respondent for the disputed domain names, Respondent then listed the disputed domain names for sale on its website at “www.” for USD 10,000 each, and thereafter started using the disputed domain names to promote a competing email marketing business. Such actions by Respondent in their totality appear opportunistic and designed to take advantage of Complainant’s rights in the CONSTANT CONTACT mark in bad faith and for Respondent’s own benefit.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. D. Reverse Domain Name Hijacking
The Panel notes Respondent’s request for a finding of reverse domain name hijacking. However, in the context of this case and taking into account the above findings, the Panel finds no basis to support a finding of reverse domain name hijacking. 8. 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 Complainant.
Georges Nahitchevansky
Sole Panelist
Date: March 24, 2019
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