The Complainant is Slickdeals, LLC, United States of America (“United States”), represented by Latham & Watkins LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Laura Bryan, 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 January 29, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 1, 2021, 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 February 3, 2021, 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 February 4, 2021. The Center verified that the Complaint and 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 February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on March 26, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on March 30, 2021. 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 Founded in 1999, the Complainant has provided Internet users a service that allows them to browse through online deals to save money when purchasing a wide variety of products. The Complainant offers these services primarily through its website at “www.slickdeals.net”. The Complainant’s website has had over nine million registered users, has attracted upwards of ten million visitors monthly, and has been ranked as one of the top websites in the United States by several third parties. The Complainant is the owner of numerous trademark registrations that it uses in connection with its services across various jurisdictions throughout the world, including in the United States, where the Respondent purportedly resides. Specifically, the Complainant’s trademark portfolio in the United States includes, inter alia, the following: SLICKDEALS, United States Trademark Registration No. 3,416,831, registered on April 29, 2008, in International class 35; and SD SLICKDEALS (design mark), United States Trademark Registration No. 4,432,278, registered on November 12, 2013, in International class 35 (hereinafter collectively referred to as the “SLICKDEALS Mark”). In addition, the Complainant has registered numerous domain names consisting of or incorporating the SLICKDEALS Mark. The Complainant hosts and operates the domain name The Disputed Domain Name was registered on June 11, 2019, and resolves to a website operated by the Respondent that consists of links connected to the Complainant’s competitors. The Complainant sent cease-and-desist letters to the Respondent on February 14, 2020, August 26, 2020, and several other dates. The Complainant has never received a response from the Respondent. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) The Disputed Domain Name is identical or confusingly similar to trademark 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the SLICKDEALS Mark. It is uncontroverted that the Complainant has established rights in the SLICKDEALS Mark based on its several years of use as well as its registered trademarks for the SLICKDEALS Mark in the United States and many jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the SLICKDEALS Mark. The Disputed Domain Name consists of the SLICKDEALS Mark in its entirety joined by a hyphen to the dictionary or descriptive word “poster”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where 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”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary word to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well-established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel considers that the Disputed Domain Name is confusingly similar to the Complainant’s Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its SLICKDEALS Mark. Nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Moreover, based on the use made of the Disputed Domain Name to create a website that allows Internet users to post on various sites belonging to the Complainant’s competitors, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Panel finds that the Respondent used the SLICKDEALS Mark for commercial gain. Finally, the composition of the Disputed Domain Name, comprising the entirety of the SLICKDEALS Mark with a hyphen and dictionary term, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the Panel concludes that the Respondent is using the Disputed Domain Name for a purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name. By using the Disputed Domain Name to resolve to the Respondent’s competing website, it is highly likely that the Respondent had knowledge of the Complainant, its business, and its SLICKDEALS Mark when creating the Disputed Domain Name. As the Respondent repeatedly references the Complainant and its services on its website, there is no doubt that the Respondent was aware of the Complainant and its SLICKDEALS Mark, and was thus intentionally capitalizing on potential customer confusion. In light of the circumstances in this case, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s SLICKDEALS Mark at the time the Respondent registered the Disputed Domain Name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Second, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s SLICKDEALS Mark and to drive Internet traffic seeking the Complainant’s services to the website to which the Disputed Domain Name resolves for commercial gain. See paragraph 4(b)(iv) of the Policy. Moreover, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Finally, the Respondent did not respond to the cease-and-desist letter sent by the Complainant. Previous UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: April 11, 2021
Full & Egal Universal Law Academy