Complainant is Safelite Group, Inc., United States of America (“United States”), represented by Ice Miller LLP, United States.
Respondent is Will Reed, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 May 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2019.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 19, 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 states that it provides “glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods, and retail store services featuring automobile glass products.” Complainant further states that it has used the trademark SAFELITE since at least 1951, and Complainant states that it owns, and provides evidence in support thereof, the following United States trademark registrations, registered between 1999 and 2018, that consist of or contain the mark SAFELITE: 2,242,375; 2,362,327; 2,689,916; 2,512,458; 2,703,017; 4,013,173; 4,182,558; 4,591,390; 5,276,731; and 5,628,444 (the “SAFELITE Trademark”).
Complainant further states, and the Panel’s independent review of the relevant WhoIs record confirms, that Complainant is the registrant of the domain name , which was created on November 17, 1995, and which Complainant uses in connection with the services associated with the SAFELITE Trademark.
The Disputed Domain Name was created on July 17, 2018, and is being used, as described by Complainant and as shown by an animated screenshot submitted with the Complaint, “to redirect and divert Internet users to another website, … to advertise and offer goods and services that are competitive to Complainant, which primarily includes glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods, and retail store services featuring automobile glass products.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the SAFELITE Trademark because it “contains the entirety of the unique SAFELITE mark plus the letters ‘KC’… [which] is geographically descriptive and an abbreviation for ‘Kansas City’ – the city where Respondent’s business predominantly operates and has a principal place of business.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use” but instead “has used the Disputed Domain Name to redirect and divert Internet users to another website, … [which] is used to advertise and offer goods and services that are competitive to Complainant, which primarily includes glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods, and retail store services featuring automobile glass products”; Complainant “has not authorized Respondent to make any use of its trade mark”; and “there is no evidence that Respondent is ‘commonly known’ by the Disputed Domain Name or a similar name.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent takes advantage of Complainant’s mark to redirect Internet users to the 911- website, which is a direct competitor of Complainant’s in Kansas City”; and “Respondent’s conduct constitutes bad faith. Respondent registered and used the Disputed Domain Name to wrongfully benefit from Complainant’s reputation by diverting users seeking Safelite services and products to Respondent’s website at .” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is 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 Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the SAFELITE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SAFELITE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “safelitekc”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the SAFELITE Trademark in its entirety, adding only the geographical description “KC” (an abbreviation for “Kansas City,” where Complainant states that “Respondent’s business predominantly operates.” As set forth in section 1.8 of WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use” but instead “has used the Disputed Domain Name to redirect and divert Internet users to another website, … [which] is used to advertise and offer goods and services that are competitive to Complainant, which primarily includes glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods, and retail store services featuring automobile glass products”; Complainant “has not authorized the Respondent to make any use of its trade mark”; and “there is no evidence that the Respondent is ‘commonly known’ by the Disputed Domain Name or a similar name.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant specifically states that paragraph 4(b)(iv) of the Policy is applicable here because Respondent “has used the Disputed Domain Name to redirect and divert Internet users to another website, 911‑… [which] is used to advertise and offer goods and services that are competitive to Complainant, which primarily includes glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods, and retail store services featuring automobile glass products.”
As set forth in section 3.1.4 of WIPO Overview 3.0, “redirecting the domain name to the complainant’s (or a competitor’s) website” is evidence of bad faith registration and use.
Accordingly, the Panel finds that Complainant has proven the third element 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: June 25, 2019
Full & Egal Universal Law Academy