The Complainant is Therm-O-Web, Inc., United States of America (“United States”), represented by Dentons US, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / GRUPO SA Ltd Co, Grupo S.A. Ltd. Co., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2020, 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 17, 2020, 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 22, 2020. 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 April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. Due to an issue with the notification of the Complaint, the Center granted the Respondent a five day extension of the due date for the Response. The new due date for the Response was May 19, 2020. The Respondent did not submit a response, and the Center thereafter notified the Respondent’s default on May 21, 2020. The Center appointed William R. Towns as the sole panelist in this matter on May 27, 2020. 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, a family-owned company founded almost 50 years ago, specializes in adhesive products for the sewing and paper crafting markets. The Complainant in September 1989 introduced a line of iron-on adhesives marketed under the “HeatnBond” brand. The Complainant is the owner of a United States trademark for HEATNBOND, United States registration No. 1709961, applied for on January 7, 1991, and issued by the United States Patent and Trademark Office (USPTO) on August 25, 1992. The Complainant’s HEATNBOND products have been featured in a number of creative and fashion publications, including Glamour, The Zoe Report, Woman’s Day, and The New York Times. The Complainant’s HEATNBOND mark has acquired incontestable status. According to the Registrar’s WhoIs records, the disputed domain name The Complainant submits that the disputed domain name The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that it has no relationship with the Respondent, that the Respondent has not been licensed or otherwise authorized to use the Complainant’s HEATNBOND mark, and that the Respondent has not been commonly known by the disputed domain name. The Complainant remarks that the disputed domain name was registered sixteen years after the Complainant launched its HEATNBOND line, thirteen years after the Complainant’s HEATNBOND mark was registered, and many years after the Complainant had established its brand rights and reputation. According to the Complainant the Registrar’s WhoIs record does not indicate how long the Respondent has owned the disputed domain name. The Complainant calls attention to the unique spelling and construction of its HEATNBOND mark, contending that the Respondent had actual or constructive notice of the Complainant’s ownership of the HEATNBOND mark when registering the disputed domain name. The Complainant maintains that the Respondent’s registration of the disputed domain name thus constitutes cybersquatting. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but instead seeks to imitate the Complainant’s mark in order to divert Internet users to the Complainant’s competitors. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that the disputed domain name initially was registered in the year 2005, some 16 years after the Complainant began using the HEATNBOND mark in commerce, 13 years after the Complainant’s mark was registered, and well after the reputation and goodwill of the Complainant’s mark was apparent. The Complainant reiterates that the HEATNBOND mark presents an unusual spelling, and concludes that the Respondent’s appropriation of the Complainant’s mark thus was not accidental. The Complainant further remarks that any reasonable Internet search by the Respondent would have disclosed the Complainant’s mark. The Complainant further contends that the Respondent utilized a privacy or proxy service in a bad faith to conceal the Respondent’s identity. The Complainant on information and belief maintains that the actual Respondent is “L Katz” (or “Lisa Katz”) and Domain Protection, LLC, of Dallas, Texas. The Complainant submits that “L Katz” has been the actual respondent in at least 29 UDRP cases decided between 2015 and 2019, and that the panels with one exception have ordered the transfer of the disputed domain names in these cases. B. Respondent The Respondent did not submit a reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Respondent Identity The Complainant has voiced concern that the Registrar’s WhoIs records do not reflect how long the Respondent has been the registrant of the disputed domain name. As previously noted, the Registrar’s WhoIs records indicate that the disputed domain name was “created” on November 8, 2005, and more recently “updated” on March 10, 2020. In some cases a registrar’s “updated” WhoIs record may concern a transfer of a domain name to a new registrant, although WhoIs records also are updated for other reasons. Given the Complainant’s previously noted expression of concern, why the Complainant did not obtain and submit a WhoIs history report to identify any changes in the ownership or registration of the disputed domain name is unclear to this Panel, Regardless, and having regard to the attendant circumstances in this case, the Panel concludes that the Respondent either was and remains the original registrant of the disputed domain name created on November 8, 2005, or otherwise acquired the disputed domain name more recently on or about March 10, 2020. In ether event, the Respondent is properly identified in this case. 7. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name The Complainant’s HEATNBOND mark is clearly recognizable in the disputed domain name.2 gTLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.3 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, 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 domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s HEATNBOND mark. Nonetheless, the Respondent has registered the disputed domain name, which is identical to the Complainant’s HEATNBOND mark, and is using the disputed domain name to generate PPC links to third-party websites promoting goods similar to those offered by the Complainant. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant and the Complainant’s HEATNBOND mark when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark through the generation of revenue from PPC advertising. UDRP panels consistently have found that the use of a domain name to host a parked page comprising PPC links does not constitute a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. See,e.g., Limit, LLC and Newman’s Own, Inc. v. Lisa Katz, Domain Protection LLC,WIPO Case No. D2020-0685; Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364. Having regard to all of the relevant circumstances in this case, and absent any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s HEATNBOND mark in mind when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name seeking to capitalize on the reputation and goodwill of the Complainant’s mark in order to mislead Internet users and profit from the generation of PPC advertising revenues. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 name William R. Towns 1 See WIPO Overview 3.0, section 1.7. 2 See WIPO Overview 3.0, sections 1.7 & 1.8, and relevant decisions. 3 See WIPO Overview 3.0, sections 1.11, 1.12, and relevant decisions.
Sole Panelist
Date: June 10, 2020
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