The Complainant is Blackhawk Network, Inc., United States of America (the “United States”), represented by RiskIQ, Inc., United States.
The Respondents are Jhonleno Fernandez, Dominican Republic and United States; Suspended Domain, Panama; Shweta Parmar, India; Anthony Williams, United States; Krishna Parmar, India; Ryan Grey, India. 2. The Domain Names and Registrars
The disputed domain names The disputed domain names The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021. On June 9, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 9, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 2021 providing the registrant and contact information disclosed by the Registrars and inviting the Complainant to submit an amendment to the Complaint or to submit a separate complaint for each of the disputed domain names. The Complainant filed an amended Complaint on June 21, 2021. 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent, Jhonleno Fernandez, sent an email communication to the Center on July 7, 2021. The Center sent the Commencement of Panel Appointment Process on July 26, 2021. The Center appointed Antony Gold as the sole panelist in this matter on July 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 The Complainant commenced selling gift cards in grocery stores in 2001 and now provides branded payment solutions and programs in twenty-eight countries. In addition to offering gift cards with themed choices, the Complainant partners with over a thousand brands in dining, entertainment, retail, home improvement, and many other categories. The Complainant’s primary trading style is MY PREPAID CENTER and it has registered trade marks to protect its brand in both Canada and the United States. The Complainant’s registrations include United States Service Mark, registration number 4733817, for MY PREPAID CENTER in class 35, registered on May 12, 2015. Since 2011, the Complainant has also owned and operated, the domain name The first and second disputed domain names were registered on February 8, 2021. They do not presently resolve to active websites.1 The third disputed domain name was registered on July 23, 2020. It previously resolved to a website claiming to be that of the Complainant and purported to offer facilities which allowed the Complainant’s customers to check account balances and activate cards. It now resolves to a landing page containing a notice that it has expired and may be deleted. The fourth disputed domain name was registered on August 4, 2017 (the WhoIs record was updated on July 27, 2020). It has previously resolved to a website purporting to be that of the Complainant which contained a login screen and instructions on how to activate the Complainant’s gift cards and check account balances. It presently resolves to the Complainant’s website. The fifth and sixth disputed domain names were registered on June 27, 2019 and the seventh disputed domain name was registered on September 3, 2020. The seventh disputed domain name previously resolved to a website claiming to be that of the Complainant and purported to offer facilities whereby the Complainant’s customers could purportedly check their account balances and activate the Complainant’s cards. Each of these disputed domain names currently redirects to the Complainant’s own website. The eighth disputed domain name was registered on December 14, 2020. It previously resolved to a notice, in Russian script, indicating that the renewal fee for this disputed domain name was overdue. It presently resolves to a landing page containing pay-per-click (“PPC”) links, including to “Mobile phones”, “Prepaid Mastercard”, and “Online Video Conference System”. The ninth disputed domain name was first registered on January 9, 2021. It does not currently resolve to an active website. The tenth disputed domain name was registered on June 27, 2019. It presently resolves to an empty file index. The eleventh, twelfth, and thirteenth disputed domain names were registered on December 27, 2020, January 3, 2021, and January 2, 2021 respectively. They do not, at present, resolve to active websites. 5. Procedural issue – Complaint filed against multiple Respondents The Complainant says that it is entitled to bring a single Complaint against all the Respondents because all the disputed domain names are subject to common control. It relies on a number of grounds in support of this assertion. First, each disputed domain name closely resembles the Complainant’s MY PREPAID CENTER trade mark and is being used for substantially the same deceitful content and currently refreshes, or has recently refreshed, from one disputed domain name to another. Second, the fifth and sixth disputed domain names were registered five seconds apart with the same Registrar. Third, the seventh disputed domain name shares the same unique Twitter identity as the fifth disputed domain name. Fourth, the third, sixth, and ninth disputed domain names share the same unique Clicky account web analytics identity as the eighth disputed domain name. Fifth, the third, fourth, and fifth disputed domain names were created with the same Registrar and share a common infrastructure. Moreover, the websites to which they have resolved are substantially indistinguishable. Sixth, the first disputed domain name recently or currently had a redirect to the third disputed domain name and the second disputed domain name was created two seconds after the first disputed domain name, using the same Registrar, contact details, and name servers. Seventh, the eleventh disputed domain name recently or currently had a redirect to the twelfth disputed domain name which, in turn, recently or currently refreshed to the thirteenth disputed domain name. They also share common Google name servers and were registered at the same Registrar. Eighth, the second and thirteenth disputed domain names recently shared the same Google Analytics account. Finally, the tenth disputed domain name was created a minute before the sixth disputed domain name with the same name server. Whilst neither the Policy nor the Rules expressly provides for the consolidation of claims against multiple respondents into a single administrative proceeding, the principles applied by panels considering requests for consolidation are set out at section 4.11.2 of the WIPO Overview 3.0. This explains that: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. See also Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. The Complainant’s evidence, summarized above, strongly suggests that each of the disputed domain names is in some way linked with one of more of the other disputed domain names. Moreover, the Panel notes that none of the Respondents has challenged the Complainant’s assertions that the disputed domain names are under common control. Having regard, in addition, to the similar characteristics of each of the disputed domain names and the uses to which they have been put – and the various other links and similarities between them noted above, as discussed in greater detail below, the Panel is satisfied that the overall evidence points to all the disputed domain names being under common control. It is procedurally efficient, as well as fair and equitable to all parties, for the Complainant’s case in respect of all the disputed domain names to be dealt with within a single Complaint. The Panel accordingly grants the Complainant’s request for consolidation and the named Respondents are therefore referred to below collectively as “the Respondent”. 6. Parties’ Contentions A. Complainant The Complainant says that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which it has rights. It refers to its trade and service marks for MY PREPAID CENTER, full details of one of these registrations having been set out above, and says that the disputed domain names were registered by the Respondent because it believed that each of them was either identical or confusingly similar to the Complainant’s mark. To the extent that a number of the disputed domain names are not identical to the Complainant’s marks, the additional content in each of them is descriptive and they are confusingly similar to those marks. The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is targeting the Complainant’s trade marks to “poison” natural search results so that those looking for the Complainant’s website will mistakenly land on the Respondent’s websites. Its websites could never amount to a bona fide offering of goods or services or considered a legitimate noncommercial or fair use of the disputed domain names. The Respondent is enticing Internet users to engage with its website content under false pretenses and wrongly implying that its websites have an affiliation with, or are endorsed by, the Complainant. The Respondent’s websites have previously contained misleading information and have been structured in such a way that, when Internet users attempt to use the “Contact Us” section to contact the Complainant or to look for technical support, they are invited to provide their contact information and other personal data to the Respondent. Finally, the Complainant says that the disputed domain names were registered and used in bad faith. The Respondent has targeted the Complainant’s trade mark to wrongfully benefit from Internet users seeking the Complainant’s official support for password recovery, or other technical support, or to activate their cards. All the Respondent’s acts are in bad faith, from using the Complainant’s mark to obtain advertising revenue via Google through to collecting personal data under false pretenses. The Respondent has attempted to attract, for commercial gain, Internet users to its website or 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 locations. Moreover, there is a serious ongoing risk that the Respondent’s activities to drive advertising revenue and collect personal data will be used in furtherance of malware distribution and/or phishing. B. Respondent The Respondent did not reply to the Complainant’s contentions save that, on July 7, 2021, Jhonleno Fernandez, the registrant of the first and second disputed domain names, sent an email to the Center following service of the Complaint stating that he did not know what this is about, and asking for an explanation. 7. Discussion and Findings Dealing, first, with the Respondent’s failure to file a substantive response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided details of its trade and service mark registrations for MY PREPAID CENTER, full details of one of these registrations having been provided above. It has thereby established its rights in this mark. The relevant country-code or generic Top Level Domain (“TLD”), in each disputed domain name (that is “.com”, “.org”, “.cc”, and so on) is disregarded for the purposes of the comparison made for the purposes of the first element as it is a technical requirement of registration. Save for the twelfth and thirteenth disputed domain names, each of the disputed domain names contains the Complainant’s MY PREPAID CENTER mark in full. The third, fourth, fifth, sixth, eighth, ninth, and tenth disputed domain names do not contain any additional letters or words and are accordingly identical to the Complainant’s service mark. The first, second, seventh and eleventh disputed domain names contain additional words or letters. However, the Complainant’s mark is recognizable within each of these disputed domain names and the added content does not prevent them from being confusingly similar to the Complainant’s mark. As explained at section 1.8 of the 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”. The twelfth and thirteenth disputed domain names lack the first word of the Complainant’s service mark, namely the personal pronoun “my”. However, section 1.7 of the WIPO Overview 3.0 explains that: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. These two disputed domain names each comprise the more distinctive and dominant component of the Complainant’s MY PREPAID CENTER mark, namely “prepaid center”, with no additional content. The Panel moreover notes that the content at the various websites associated with the disputed domain names affirms that the Respondent sought to target the Complaints mark and rights. See section 1.15 of the WIPO Overview 3.0. The Panel therefore finds that the third, fourth, fifth, sixth, eighth, ninth, and tenth disputed domain names are identical to a service mark in which the Complainant has rights; and that the first, second, seventh, eleventh, twelfth, and thirteenth disputed domain names are confusingly similar. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. The use which the Respondent has made of each of the disputed domain names has evidently varied over time. At present, six of the disputed domain names are inactive and two of the disputed domain names are effectively inactive, in that they resolve to a notice indicating that the relevant disputed domain name has expired and to an empty file index respectively. Four of the disputed domain names resolve to the Complainant’s website and the remaining disputed domain name resolves to a directory page containing PPC links. Section 2.2 of the WIPO Overview 3.0 provides examples of activities which might constitute a bona fide offering of goods and services. These would generally require not only “clear contemporaneous evidence of bona fide pre-complaint preparations” but also evidence “generally pointing to a lack of indicia of cybersquatting intent”. The fact that none of the disputed domain names is presently being used in connection with a website which masquerades as that of the Complainant is of no significance as it is evident from the information provided by the Complainant that, at least some of the disputed domain names have been previously used for dishonest purposes and that any or all of the disputed domain names might be used in future for similar activities. As explained at section 2.13.1 of the WIPO Overview 3.0 which explains (in the specific context of fair use, but of wider application) that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. See also; Accor v. SANGHO HEO / Contact Privacy Inc.,WIPO Case No. D2014-1471. There is no evidence that the Respondent has been commonly known by the disputed domain names and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; such use as the Respondent has made of the disputed domain names is commercial in character and their composition, being confusingly similar or identical to the Complainant’s MY PREPAID CENTER mark, carries a risk of implied affiliation with the Complainant, which prevents their use from being considered fair. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names and the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint (save for the brief email to the Center dated July 7, 2021, referred to above) it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith Having regard to the fact that the Respondent has registered thirteen domain names each of which is identical or confusingly similar to the Complainant’s MY PREPAID CENTER service mark and that at least some of these disputed domain names have resolved to websites which have previously masqueraded as those of the Complainant, it is clear that the Respondent registered the disputed domain names with an awareness of the Complainant’s mark and with the intention of taking unfair advantage of it. As explained by the panel in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. The disputed domain names which are inactive fall to be considered under the doctrine of passive holding. Panelists considering the question of passive holding look at the overall circumstances of registration as well as, typically, the following factors; (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 and, (iv) the implausibility of any good faith use to which the domain name may be put” (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and section 3.3 of the WIPO Overview 3.0). Dealing with each of these factors, the Complainant’s MY PREPAID CENTER mark has some degree of distinctiveness and has been widely used. Second, the Respondent has not provided a substantive response to the Complaint, nor provided evidence of actual or good faith use through any other communication. Third, the details of the underlying registrants of eleven of the thirteen disputed domain names were protected by privacy services and the contact details for the first and second disputed domain names, which have disclosed the name of the registrant, appear to be inaccurate or incomplete. Fourth, noting the rather sophisticated web of registrations leading to a consolidation, this shows an effort to attack the Complainant’s mark in a number of vectors. Finally, having regard to the fact that the disputed domain names are clearly referable to the Complainant, it is not possible to conceive of any good faith use to which they could be put. The Respondent’s passive holding of the disputed domain name therefore has the characteristics which are associated with bad faith registration and use. The use of four of the disputed domain names in order to resolve to the Complainant’s own website, whilst not falling precisely into the category of passive holding is particularly misleading as it gives the false impression of being run by or with the endorsement of the Complainant, and it is essentially the same in nature as passive holding it points to the Respondent having no intention to make any good faith use of them and the likelihood that they will be repurposed in the future in order to mislead and deceive Internet users; see Accor v. SANGHO HEO / Contact Privacy Inc (supra). And, as explained at section 3.1.4 of the WIPO Overview 3.0, “given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The Panel therefore finds that each of these disputed domain names is being used in bad faith. So far as the eighth disputed domain name is concerned, whilst the use of a domain name to point to parking pages hosting PPC sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it resolves are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely PPC or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy in that, by using the eighth disputed domain name in this manner, the Respondent has intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The Panel therefore finds that each of the disputed domain names has been registered and is being used in bad faith. 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 names Antony Gold 1 As outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly taken steps to establish whether each disputed domain name is in active use and, if so, the nature of the website to which it presently resolves.
Sole Panelist
Date: August 13, 2021
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