The Complainant is Dr. Rebecca Parsons, ThoughtWorks, Inc., United States of America (“United States”), represented by Partridge Partners PC, United States.
The Respondent is Perfect Privacy, LLC / This Domain May be for Sale at , New Ventures Services, Corp, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with B LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2019, 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 April 26, 2019, 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 April 30, 2019.
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 May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 5, 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
Based in the United States but doing business globally, the Complainant is a well-established Internet business entity. The Complainant has operated continuously in connection with the unregistered service mark, REBECCA PARSONS, since at least 2011.
The Respondent is the registered owner of the disputed domain name, , which had been previously registered and owned by the Complainant. The Respondent registered the disputed domain name on December 26, 2017. The disputed domain name now resolves to a website containing pay-per-click (“PPC”) links to third party websites that offer services similar to those offered by the Complainant and a link that offers the disputed domain name for sale. 5. Parties’ Contentions A. Complainant
- The Complainant is Thoughtworks, Inc. and its Chief Technology Officer, Rebecca Parsons, who has worked in that capacity since 2007. The Complainant operates in the field of computer software and digital consulting on a global basis. It has over 5,000 employees, working in 40 offices in 14 countries.
- Since at least 2011, the Complainant has used the REBECCA PARSONS mark continuously in connection with computer program and software development advertising, as well as with websites, articles, podcasts, social media, and speaking events and conferences. Therefore, the mark has become a distinctive identifier of the Complainant’s services, with a high degree of actual public recognition within the Complainant’s specialized market. As a result, the Complainant has established common law service mark rights in the REBECCA PARSONS mark.
- The Complainant had registered, and used in its operations, the disputed domain name , from August 2010 to October 2017. The Complainant’s registration and ownership of the disputed domain name lapsed due to an administrative oversight.
- The disputed domain name is identical or confusingly similar to the Complainant’s REBECCA PARSONS mark. The absence of a space between the two terms comprising the disputed domain name does not differentiate it from that mark. Also, the addition of the generic Top-Level Domain (“gTLD”), “.com”, fails to distinguish the disputed domain name from the mark.
- The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not affiliated in any way with the Complainant, and the Complainant has not granted the Respondent a license to use the REBECCA PARSONS mark. Moreover, the Respondent is not commonly known by the disputed domain name. Finally, the disputed domain name is used for PPC links to third party websites that advertise services that are pertinent to the Complainant’s offerings. That use constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The Respondent had constructive and actual knowledge of the Complainant’s REBECCA PARSONS mark. The Respondent is using the disputed domain name for commercial gain through the likelihood of confusion with the Complainant’s mark. Furthermore, the parking page connected with the disputed domain name contains not only PPC links, but also a link that offers to sell the name, suggesting a price that would exceed USD 25,000. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and grant it a transfer of the disputed domain name, , provided that the Complainant can prove:
- 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
It is clear to the Panel that the disputed domain name, , is identical to the Complainant’s REBECCA PARSONS service mark. The only differences are the deletion of the space between the two dominant terms of the mark and the addition of the gTLD, “.com”, which are not significant and create no meaningful distinction between the disputed domain name and the mark. See, Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org,WIPO Case No. D2015-1113 (finding to be identical to the KHLOE KARDASHIAN mark.); and Adam Leitman Bailey v. Erwin Rohman,WIPO Case No. D2013-1090 (finding to be identical to the ADAM LEITMAN BAILEY mark).
The Complainant does not claim to own a valid service mark or trademark registration for its REBECCA PARSONS mark. However, such registration is not necessary for a complainant to prevail under the UDRP if that complainant can claim successfully common law rights in a mark. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.1 (“The term ‘trademark or service mark’ as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered [sometimes referred to as common law] marks.”).
In this case, the Complainant has furnished the Panel with ample evidence that the Complainant has used the REBECCA PARSONS mark continuously in commerce since at least 2011. That evidence also establishes that a considerable amount of sales, advertising and press recognition have been attached to that mark during the same time period. Moreover, the undisputed contention that the Complainant owned the disputed domain name for most of that time solidifies the Panel’s belief that the Complainant has acquired common law rights in the REBECCA PARSONS mark sufficient for Policy purposes.
Accordingly, the Panel finds 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
Given the difficulty of proving a negative, the Complainant must make only a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name before the burden shifts to the Respondent to come forward with evidence that it does possess those rights or interests. See, WIPO Overview 3.0, section 2.1; and OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (“[...]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 disputed domain name.”).
The Complainant has demonstrated to the Panel that the Complainant has rights in a service mark to which the disputed domain name is identical. The Complainant also contends strongly that there is no affiliation between it and the Respondent, and that no license has been given to the Respondent to use that mark. Therefore, the Panel concludes that the Complainant has set forth a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has failed to file a Response, but the Panel will examine the record to determine whether there is any basis to find that the Respondent has rights or legitimate interests in the disputed domain name. In doing so, the Panel will accept all of the Complainant’s reasonable contentions as true and employ the criteria listed in Policy paragraph 4(c) as a guide to possible support for the Respondent’s position. See, The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“[...] the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.”).
The Complainant contends, with supporting evidence, and the Panel accepts that the website to which the disputed domain name is connected contains primarily PPC links to third party websites that offer services akin to the services offered by the Complainant. In the Panel’s opinion, that usage does not comport with “a bona fide offering of goods or services” per paragraph 4(c)(i) of the Policy. See, Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyG / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302 (“[...] using a domain name incorporating the Complainant’s mark to host sponsored links associated with the Complainant’s area of business cannot be a bona fide offering of goods or services.”); and Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302.
There is no evidence before the Panel to lead it to believe that the Respondent has been commonly known as the disputed domain name, so Policy paragraph 4(c)(ii) is inapplicable. Finally, as the PPC-link usage to which the disputed domain name is being put is inconsistent with legitimate noncommercial or fair use, the Panel concludes that Policy paragraph 4(c)(iii) is inapplicable to these proceedings as well. See, Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 (“The Respondent is not making a noncommercial use of the disputed domain name in the terms of paragraph 4(c)(iii) of the Policy since its usage for referrals through links to advertisers may reasonably be assumed to be commercial in its intent and effect.”); and The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057 (“There is no question that the Respondent has generated pay-per-click advertising revenue from links and advertisements on his website [...] and as such the Respondent in the Panel’s opinion cannot successfully invoke paragraph 4(c)(iii) of the Policy.”).
Since the Panel has found no basis for a successful challenge to the Complainant’s prima facie case, the Panel finds that that prima facie case is determinative.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has presented to the Panel clear and non-contradicted evidence that the disputed domain name is attached to a website that, among other things, contains a link which solicits offers for the sale of the disputed domain name for prices far in excess of the Respondent’s out-of-pocket costs directly related to said name. As a consequence, the Panel determines that the circumstance listed in paragraph 4(b)(i) of the Policy applies to this case, and that the disputed domain name has been registered and is being used in bad faith on that basis. See, PHH Corporation v. Wu Shangxiao,WIPO Case No. D2015-0825 (“The website at the Disputed Domain Name also contains a link offering the Disputed Domain Name for sale [...] it is open to the Panel to infer that the Respondent purchased the Disputed Domain Name primarily for the purpose of selling it for more than their out-of-pocket costs [see paragraph 4(b)(i) of the Policy].”); and DIRECTV, LLC v. Moniker Privacy Services / Mongol Post,WIPO Case No. D2014-1319 (“[...] the website of the disputed domain name has a link offering the domain name for sale to the public. The Panel finds that this factor in combination with the Respondent’s knowledge of the Complainant’s trademark is further evidence of bad faith use.”).
The Panel also concludes that the Respondent, by the inclusion of PPC linkage on the website connected with the disputed domain name, intends to gain commercially through the likelihood of confusion between the disputed domain name and the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website. Thus, the Panel determines that the disputed domain name also has been registered and used in bad faith per Policy paragraph 4(b)(iv). See, Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344 (“The Panel further finds that the Respondent’s use of the Domain Name to resolve to a parking page containing sponsored links constitutes bad faith [...] in accordance with paragraph 4(b)(iv) of the Policy.”); and Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462 (“The Respondent is deriving a financial benefit from web traffic diverted through the Domain Name to linked websites on the domain parking page [...] This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy.”)
Accordingly, the Panel finds that the disputed domain name has been 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: June 19, 2019
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