The Complainant is Click Sales, Inc. of Boise, Idaho, United States of America, represented by Holland & Hart, LLP, United States of America.
The Respondent is Zheng Zhong Xing of Fuzhou, Fujian, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2011. On January 31, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On February 1, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the information of the Registrar and Registrant, the Complainant filed an amended Complaint on February 2, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2011.
The Center appointed The Hon Neil Brown QC as the sole panelist in this matter on March 7, 2011. 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 a United States company that operates a large industry leading and secure online retail and affiliate marketing platform on its website at “www.m”. It has done this successfully since 1998 and now conducts about 10 million transactions over the platform each year in the United States and internationally. As a result, its vendors and affiliates who use the system have received some USD2 billion in payments.
The Complainant has several registered trademarks, one of which is the trademark for CLICKBANK, being trademark number 2,237,676 registered with the United States Patent and Trademarks Office on April 6, 1999 in connection with electronic funds transfer services (“the CLICKBANK mark”).
The Respondent registered the disputed domain name on July 21, 2010. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the disputed domain name is confusingly similar to the Complainant's registered CLICKBANK mark, that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the disputed domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered CLICKBANK mark to which reference has already been made. It then says that the disputed domain name is confusingly similar to the CLICKBANK mark as the spelling of that word in the disputed domain name is the same as the spelling of the same word in the trademark.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the disputed domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known CLICKBANK mark and to use it in an illegitimate way, namely by using it to promote the services of the Complainant's competitors.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In support of this proposition, the Complainant submits that the CLICKBANK mark is very well-known, the Respondent has registered a domain name consisting solely of that trademark and the Respondent has intentionally attempted 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 the Respondent's website or locations or of a product or service on the website or location in breach of paragraph 4(b)(iv) of the Policy. It is also submitted by the Complainant that the registration and use of the disputed domain name is disruptive of the Complainant’s business within the meaning of paragraph 4(b)(iii) of the Policy and prevents the Complainant from registering the disputed domain name within the meaning of paragraph 4(b)(ii) of the Policy and that the whole of the conduct of the Respondent constitutes bad faith both with respect to the registration and the use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have found many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The disputed 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 in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant that it owns the registered CLICKBANK mark to which reference has been made, that it is current and that the Complainant therefore has rights in that mark.
The Panel also finds that the disputed domain name is identical to the CLICKBANK mark. That is so because the spelling of the disputed domain name is identical to that of the mark and it has long been held that suffixes such as the ccTLD suffix “.co” cannot negate an otherwise identical domain name.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Thus, if the respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel's task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a response or any other form of submission. The Respondent in the present case was given notice that it had until February 24, 2011 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“[…[a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, 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 prima facie case is based on the facts that:
(i) the CLICKBANK mark is well-known internationally;
(ii) it indicates the name of a well-known provider of an online retail and affiliate marketing platform with very extensive international use;
(iii) the Respondent chose this prominent name for its domain name;
(v) the Respondent was not authorized by the Complainant to use the CLICKBANK name or mark in a domain name or anywhere else; and
(vi) the Respondent has on the Complainant’s evidence been using the disputed domain name for an illegitimate purpose, namely to make money from it by promoting the services of the Complainant's competitors.
The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line 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 the site or location.
The Complainant relies principally on paragraph 4(b)(iv) and also on paragraphs 4(b)(ii) and (iii).
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the disputed domain name in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(iv) of the Policy. That is so for the following reasons.
The evidence shows that the Respondent has registered as a domain name the Complainant's well-known CLICKBANK trademark. This raises the preliminary assumption that the disputed domain name has been registered for some illegitimate purpose. Of course it was always open to the Respondent to show that this was not so, but it has declined to make any attempt to give a plausible explanation for registering a domain name incorporating such a prominent trademark.
Secondly, the Respondent has then used the disputed domain name to provide links to a parking page website which, on the evidence annexed to the Complaint, advertises services which are the type of services provided by the Complainant, but which are in fact to be supplied by the Complainant's competitors. The Panel has looked at the website itself and has found its content is devoted to a large range of financial services and particularly to affiliate programs which, of course, are the essence of the Complainant’s business. Virtually the only content of the website that is not devoted to promoting services in competition with the Complainant is an announcement that the disputed domain name may be for sale, a fact that arouses further suspicion that the registration and use of the disputed domain name is in bad faith. Indeed, the evidence is that the Respondent has demanded an exorbitant price for the sale of the disputed domain name.
The Panel concludes that all of this has been done by the Respondent for its own commercial benefit and to the clear prejudice of the Complainant and the business it has built up legitimately over many years.
That conclusion makes it clear that the facts of the present case bring it squarely within the provisions of paragraph 4(b)(iv) of the Policy.
There is therefore no need to consider the further grounds relied on by the Complainant. But the situation is aggravated by the fact that the “.co” extension added by the Respondent to the CLICKBANK mark to create the disputed domain name has only recently become available and the totality of the unchallenged evidence shows that its use by the Respondent is a clear attempt to benefit in an opportunistic and underhand way from this development in the Internet.
The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that the Complainant has thus made out the third of the three elements that it must establish under the Policy. 7. Decision
For all 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 be transferred to the Complainant.
The Hon Neil Brown QC
Sole Panelist
Dated: March 11, 2011
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