The Complainant is LogMeIn, Inc., United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Joe Lavery, Must Have Marketing, LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 8, 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 September 13, 2021. After an informal communication from the Respondent on September 14, 2021, the Complainant requested the suspension of the proceedings on September 17, 2021. Pursuant to paragraph 17 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), on September 20, 2021, the proceedings were suspended until October 20, 2021. Upon request from the Complainant, the Center reinstituted the proceedings on October 20, 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, 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 October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. The Respondent did not submit a formal response. Accordingly, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with the Commencement of Panel Appointment Process on November 12, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 18, 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 BackgroundThe Complainant is the owner of an established family of GOTO and GOTO-formative trademarks in the industry of collaborative communications-focused solutions, software and Software as a Service (“SaaS”). As early as October 2001, the Complainant and its predecessors in interest have continuously used the family of GOTO-formative trademarks in connection with computer software, computer networking, data sharing and data transmittal, mobile and web applications, and SaaS products. Among the Complainant’s most recognized brands is “GoToWebinar”, a virtual video conference software platform that enables users to host large-scale online events. Since 2006, GoToWebinar-branded software has been used to create thousands of online conferences each year throughout the United States and internationally.
The Complainant is the owner of: GOTOWEBINAR, United States Trademark Reg. No. 3,469,501, registered on July 15, 2008, with a date of first use on June 15, 2006, in International Classes 9, 38, and 42.
In addition, the Complainant owns the GOTOWEBINAR registered trademark in numerous international registrations in jurisdictions worldwide. The aforementioned registered trademarks will hereinafter be collectively referred to as the “GOTOWEBINAR Mark”.
The Complainant owns, among many others, the
The Disputed Domain Name was registered on June 22, 2021, and resolves to the Complainant’s official website. A mail exchange (“MX”) record search for the Disputed Domain Name revealed that the Disputed Domain Name was configured for email capabilities.
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s GOTOWEBINAR Mark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- 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. RespondentThe Complainant’s attorney received an informal communication from the Respondent on September 14, 2021, stating that the Respondent registered the Disputed Domain Name “to make them [the Complainant] and me [the Respondent] some money”. Further, the Respondent argued the MX records were automatically setup by the Registrar and not by active actions by the Respondent and the Respondent was not using the Disputed Domain Name for purposes of sending emails. Lastly, the Respondent concluded, “[t]ake the domain. I don’t wait it”.
No further communications were received from the Respondent.
6. Discussion and Findings A. Identical or Confusingly SimilarThis 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 identical to the GOTOWEBINAR Mark.
It is uncontroverted that the Complainant has established rights in the GOTOWEBINAR Mark based on its years of use as well as its numerous registered trademarks for the GOTOWEBINAR Mark in the United States, where the Respondent allegedly resides, and numerous other 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 rights in the GOTOWEBINAR Mark.
The Disputed Domain Name consists of the GOTOWEBINAR Mark in its entirety, followed by the generic Top-Level Domain (“gTLD”) “.one”. When a disputed domain name incorporates the entirety of a trademark, the disputed domain name will generally be considered confusingly similar to that mark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Here, the Disputed Domain Name contains the Complainant’s GOTOWEBINAR Mark in its entirety and thus, the Disputed Domain Name is identical to the GOTOWEBINAR Mark.
Finally, the addition of a gTLD such as “.one” in a domain name is technically required. 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 Disputed Domain Name is identical to the Complainant’s GOTOWEBINAR Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder 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.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s GOTOWEBINAR Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name or that the Respondent has made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Moreover, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Name to pass off as the Complainant and resolve to the Complainant’s website, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Moreover, the composition of the Disputed Domain Name, comprising the entirety of the GOTOWEBINAR Mark, carries a high 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 2.5.1.
Finally, the fact that MX records are associated with the Disputed Domain Name indicates that the Respondent is capable of using the Disputed Domain Name to send emails, which given the circumstances, cannot be a bona fide offering of goods or services, as any email address using the Disputed Domain Name could only be used for to confuse Internet customers receiving the emails. See Facebook Inc. v. Jeremy Williams, 3 Man Group,
WIPO Case No. D2019-1535. Additionally, the Respondent was candid in his admission of having registered the Disputed Domain Name with the intent of commercial profit. While the Respondent has claimed the activation of MX records was automatically done by the Registrar, the real or implied threat to the Complainant is ongoing, and noting the composition of the Disputed Domain Name, Respondent’s motive does not confer rights or legitimate interests.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
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 FaithThe 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 circumstances of this case including the initial use of a privacy service to hide the Respondent’s identity, Respondent’s statement acknowledging his awareness of the Complainant, the Respondent’s intent to use the Disputed Domain Name for commercial gain, the failure of the Respondent to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Disputed Domain Name may be put, support an inference of bad faith.
Second, the Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its GOTOWEBINAR Mark, noting the Respondent’s communication. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark”).
Third, while Respondent claims not to be using the Disputed Domain Name for emails and no conclusive evidence has been provided by the Complainant, the existence of a mail exchange or MX record associated with the Disputed Domain Name, with the redirection to the Complainant’s website, also suggests that Respondent could be engaged in a phishing scheme by sending emails that would undoubtedly cause confusion as to the source of the Disputed Domain Name. Such use would be a strong case of bad faith.
In any case, the Panel finds that the Respondent had actual knowledge of the Disputed Domain Name and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith. The Respondent’s decision to redirect traffic to the Complainant’s website also serves as evidence of the Respondent’s knowledge of the Complainant’s existence and business, and its intention to associate the Disputed Domain Name with the Complainant’s website. Similarly, panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See section 3.1.4 of the WIPO Overview 3.0. The Respondent’s awareness of the Complainant and its GOTOWEBINAR Mark additionally suggests that the Respondent’s decision to register the Disputed Domain Name was intended to cause confusion, impersonate the Complainant, and use the Disputed Domain Name in bad faith.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
7. DecisionFor 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: December 2, 2021