The Complainant is LeadsM LLC, United States of America (“United States” or “US”), internally represented.
The Respondent is Privacy Protect, LLC (PrivacyP), United States / Oscar Dominguez, Spain. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 15, 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 June 19, 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 June 19, 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 June 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2019.
The Center appointed John Swinson as the sole panelist in this matter on July 24, 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
The Complainant is LeadsM LLC, a company incorporated in the United States.
The Complainant is the registered owner of US registered trade mark number 4609036 for registered on September 23, 2014 (the “Trade Mark”).
The Respondent is Oscar Dominguez, an individual of Spain. No response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on December 14, 2018. The Disputed Domain Name resolves to a website containing the words “Coming Soon” and “Funnel Platform”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain name is nearly identical to the Trade Mark. The Complainant registered the Trade Mark in 2014.
No rights or legitimate interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent registered the Disputed Domain Name in December 2018. This is consistent with the 2019 copyright notice on the Respondent’s website.
The Trade Mark has been used by the Complainant in commerce since 2011 and was registered in 2014.
The Respondent’s website is only a step up from a parked domain, with only the words “Coming Soon” and “Funnel Platform”. There is no description of the webpage, nature of the services, expected launch date, or any other information. This suggests the Respondent is not making a legitimate or fair use of the Disputed Domain Name, which is misleading to consumers and tarnishes the Complainant’s name and brand.
Registered and used in bad faith
The Disputed Domain name was registered in December 2018. The Respondent’s website says “Funnel Platform” and “Coming Soon”, with no further information.
The following factors suggest the registration was made and is being used in bad faith: the Respondent registered the Disputed Domain Name with privacy protection, the webpage is under construction, has no description of the goods or services, has no contact information listed, and uses the exact spelling of the Trade Mark. The registration has also prevented the Complainant from registering the “.org” domain name of the Trade Mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the “leadsmarket” component of the Trade Mark. This component is a dominant feature of the Trade Mark and it is clearly recognizable within the Disputed Domain Name. The design elements of the Trade Mark are to be largely disregarded for the purposes of assessing identity or confusing similarity. Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name is confusingly similar to the Trade Mark and therefore the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel notes that the Disputed Domain Name resolves to a website containing the words “Coming Soon” and “Funnel Platform”. The Panel considers that this is not sufficient evidence of credible investment in website development to qualify as prior use or demonstratable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
- The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The website at the Disputed Domain Name currently resolves to a website containing the words “Coming Soon” and “Funnel Platform”. The Panel considers that this is not sufficient evidence of legitimate noncommercial or fair use.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant began operating its business in 2011 under the domain name and registered the Trade Mark in 2014. The Disputed Domain Name was registered on December 14, 2018. An Internet search at this time would have revealed the Complainant’s business. The Panel also considers it unlikely that the Respondent applied to register the “.org” TLD without enquiring whether the “.com” Top-Level Domain (“TLD”) was available. Given that the Disputed Domain Name is almost identical to the Trade Mark and without the benefit of a Response from the Respondent, the Panel finds it more likely than not that the Respondent was aware of the Trade Mark at the time the Disputed Domain Name was registered. The Panel can reasonably infer that the Respondent sought to take advantage of the reputation of the Complainant and the Trade Mark by registering the Disputed Domain Name. This is bad faith registration.
The Disputed Domain Name resolves to a website containing the words “Coming Soon” and “Funnel Platform”. The fact the Disputed Domain Name is not being actively used does not prevent a finding of bad faith (see WIPO Overview 3.3 and Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003).
Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:
“[w]hile panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
The particular circumstances of this case which lead to a conclusion of bad faith use are:
- without evidence to the contrary, the Panel considers that it is more likely than not that the Respondent was aware of the Complainant at the time it registered the Disputed Domain Name;
- the Disputed Domain Name is highly similar to the Trade Mark;
- the Respondent has not submitted a Response or provided any evidence of actual or contemplated good-faith use;
- the Respondent has taken active steps to conceal its true identity through a privacy service (see section 3.6 of WIPO Overview 3.0); and
- taking into account all of the above, it is not possible to conceive of any plausible good faith use by the Respondent.
The Panel notes that the terms “leads” and “market” are descriptive and dictionary words. However, the Respondent did not respond and the Panel considers that the circumstances described above support an inference of bad faith, which the Respondent has not rebutted.
At the present time, the Respondent is not using the Disputed Domain Name in a way that would be related to the meaning of “leads” or “market” or a “leads market”, but rather the Disputed domain name resolves to a site that merely says “Funnel Platform” with a logo and mountain-sky background. Thus, without the benefit of a response, the Panel is unable to ascertain any grounds to rebut the Complainant’s claims.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith. Accordingly, the Complainant has satisfied 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.
John Swinson
Sole Panelist
Date: August 6, 2019
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