The Complainant is Helpful Things, LLC., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is WhoisGuard, Inc., Panama / Robin Gupta, India. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 16, 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 September 17, 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 September 18, 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 September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2019. The Center appointed John Swinson as the sole panelist in this matter on October 16, 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 Helpful Things LLC, a company incorporated in the United States. The Complainant operates an online dating and meeting platform, where individuals can chat and connect with each other. The Complainant has applied for a number of trade marks for DOUBLELIST, including United States application number 88453074, filed on May 30, 2019. This application has not yet been accepted by the United States Trade Mark Office. The Complainant claims common law rights in the trade mark DOUBLELIST by virtue of use of the mark since early 2018 (“Trade Mark”). The Complainant is the owner of a domain name which incorporates the Trade Mark, being The Respondent is Robin Gupta, an individual of India. No response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on December 6, 2018. The Disputed Domain Name currently resolves to a website which purports to offer dating and chat services. The Complainant submits that prior to the notice of dispute, the Disputed Domain Name resolved to a website which was a replica of the Complainant’s former website. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Complainant has developed common law rights in the Trade Mark. Since early 2018 the Complainant has invested significant time, money and effort into the Trade Mark. As a result of their extensive and exclusive use of the Trade Mark, Internet users and consumes now associate the Trade Mark with the Complainant’s services. The Disputed Domain Name incorporates the Complainant’s Trade Mark in its entirety, with no additional words. The generic Top-Level Domain (“gTLD”) can be ignored for the purposes of this element. Therefore, the Complainant submits that the Disputed Domain Name is identical to the Trade Mark. Rights or Legitimate Interests The Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent does not have any registered trade marks for the term DOUBLELIST. The Respondent has not been using the Disputed Domain Name for a bona fide purpose. Prior to the notice of dispute, the Disputed Domain Name resolved to a website which was a replica of the Complainant’s older website. When Internet users click on the “sign-up now, it’s free”, a pop up appears which redirects users to one of the Complainant’s competitor’s websites. This is misleading Internet users. The Respondent is not using the Disputed Domain Name to offer legitimate goods and services. There is no evidence that the Respondent is using the website for fair use. Through the redirection, the Respondent is diverting consumers to competing services and commercially benefitting from those redirections. Registered or Used in Bad Faith The Respondent has registered and used the Disputed Domain Name in bad faith. The Disputed Domain Name was registered eight months after the launch of the Complainant’s DOUBLELIST brand and the Complainant’s website When the Complainant was alerted to the Disputed Domain Name, the Complainant wrote a cease and desist letter (and a follow up letter) to the Respondent. The Respondent did not reply. This is further evidence of bad faith. The Respondent is using the Disputed Domain Name in bad faith. The Disputed Domain Name displayed content mimicking the Complainant’s website. The Respondent has registered the Disputed Domain Name with the aim to attract, for commercial gain, Internet users and to create confusion with the Complainant’s brand as to whether or not the website is associated with the Complainant. Prior to the Complainant sending a letter to the Respondent, the website contained the statement “not affiliated with doublelist.com”. This is insufficient to avoid confusion. The Disputed Domain name is an exact match for the Trade Mark and therefore “initial interest confusion” exists. The Respondent registered and used the Disputed Domain Name in bad faith. 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 Complainant claims common law rights in the Trade Mark. In order to successfully assert common law or unregistered trade mark rights, the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or its goods or services (i.e., that the Trade Mark has acquired a "secondary meaning") (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as: - the duration and nature of use of the mark; - the amount of sales under the mark; - the nature and extent of advertising using the mark; and - the degree of actual public recognition. In this case, the Complainant has provided evidence of its reputation and submitted that between February 2018 and July 24, 2019 the total amount of pages viewed on the Complainant’s website was 7.7 billion. Further, the Complainant submits that sales of advertising on their website started at USD 10,375 in April 2018 and increased to USD 95,019 in June 2019. In this case, the Panel finds that the Complainant has established common law rights in the Trade Mark. The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The gTLD “.site” is disregarded under this element (see section 1.11 of WIPO Overview 3.0”). The Disputed Domain Name is identical to the Trade Mark. 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 (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name currently resolves to a page which purports to offer dating and chat services. Prior to the notice of dispute, the Disputed Domain Name resolved to a website which was a replica of the Complainant’s older website. This is not bona fide in the circumstances. - 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 resolves to a website that offers dating and chat services and therefore presumably generates revenue from these services. Further, the website contains a pop up link which redirects users to one of the Complainant’s competitor’s websites. 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 Disputed Domain Name was registered eight months after the launch of the Complainant’s DOUBLELIST service and the Complainant’s website “www.doublelist.com”. The Panel accepts that the Complainant has developed a reputation in the Trade Mark and is known for the services it provides. Given that the Disputed Domain Name is identical to the Trade Mark and, without the benefit of a response from the Respondent, the Panel can reasonably infer that the Respondent either knew or should have known that the registration of the Disputed Domain Name would be identical or confusingly similar to the Complainant’s Trade Mark. The Panel also considers it unlikely that the Respondent applied to register the “.site” gTLD without enquiring whether the “.com” gTLD was available. The Panel finds that the Disputed Domain Name was registered in bad faith. The Complainant has made submissions and provided evidence that the Respondent was previously using the website to impersonate the Complainant’s site. Further, the website contains a pop up link which redirects users to one of the Complainant’s competitor’s websites. Given the use that the Respondent is making of the Disputed Domain Name (i.e., copying the Complainant’s website design and business and redirecting Internet users to competitors), the Panel finds that the Respondent registered and is using the Disputed Domain Names in an intentional attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the website. The Respondent is using the Trade Mark in the Disputed Domain Name to trade off the Complainant’s reputation, and to misleadingly divert Internet users to their own website. Further, the lack of response from the Respondent to the Complainant’s cease and desist is further evidence of bad faith. In light of the above, the Panel finds that the Complainant has succeeded on 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 John Swinson
Sole Panelist
Date: October 29, 2019
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