Visual Comfort of America LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2103001937966
Complainant is Visual Comfort of America LLC (“Complainant”), represented by Gregory J. Chinlund of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <visualcomfrot.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2021; the Forum received payment on March 25, 2021.
On March 26, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <visualcomfrot.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@visualcomfrot.com. Also on April 1, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant has been a premier resource for signature designer lighting since 1987. Complainant has rights in the VISUAL COMFORT & CO. trademark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,371,389, registered July 23, 2013). Respondent’s <visualcomfrot.com> domain name is confusingly similar to Complainant’s VISUAL COMFORT & CO. trademark as it incorporates the misspelled source identifying portion of Complainant’s VISUAL COMFORT & CO. trademark and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <visualcomfrot.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent does not have, and never has had, permission to use Complainant’s VISUAL COMFORT & CO. trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with malware distribution and pay-per-click hyperlinks.
Respondent registered and uses the <visualcomfrot.com> domain name in bad faith. First, Respondent offers the disputed domain name for sale far in excess of Respondent’s registration costs. Respondent also has a history of bad faith registration. Additionally, Respondent registered a confusingly similar domain name and uses it in connection with pay-per-click hyperlinks. Finally, Respondent engaged in typosquatting and uses the disputed domain name in connection with malware distribution.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following national and regional trademark registrations:
U.S. national trademark registration No. 4,371,389 VISUAL COMFORT & CO. (word), registered July 23, 2013 for goods in class 11; and
European Union Trade Mark (EUTM) registration No. 011733417 VISUAL COMFORT & CO. (word), registered September 4, 2013 for goods in class 11.
The <visualcomfrot.com> domain name was registered on February 11, 2021.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the VISUAL COMFORT & CO. trademark through its registration with the USPTO, as well as European Union Trade Mark. Registration of a trademark with a trademark agency such as the USPTO or the EUIPO is generally sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration with the USPTO (e.g., Reg. No. 4,371,389, registered July 23, 2013), and with the EUIPO (e.g., Reg. No. 011733417, registered September 4, 2013). Therefore, the Panel finds that Complainant has demonstrated rights in the VISUAL COMFORT & CO. mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <visualcomfrot.com> domain name is confusingly similar to Complainant’s VISUAL COMFORT & CO. trademark as it incorporates the misspelled source identifying portion of Complainant’s VISUAL COMFORT & CO. trademark and the generic top-level domain “.com.” Adding a gTLD to the misspelled dominant portion of a trademark fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD); see also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant contends that Respondent lacks rights or legitimate interests in the <visualcomfrot.com> domain name as Respondent is not commonly known by the disputed domain name and Respondent does not have, and never has had, permission to use Complainant’s VISUAL COMFORT & CO. trademark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico.,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the VISUAL COMFORT & CO. trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <visualcomfrot.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with malware distribution and pay-per-click hyperlinks. Using a disputed domain name in connection with malware distribution and pay-per-click hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing that Respondent uses the disputed domain name to redirect Internet users to either websites containing malicious content portrayed as “security alerts” and/or to a link farm designed to generate pay-per-click or click-through advertising revenue. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <visualcomfrot.com> domain name in bad faith as Respondent offers the disputed domain name for sale far in excess of Respondent’s registration costs. Offering a disputed domain name for sale far in excess of a respondent’s registration costs can demonstrate bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i).”). Here, Complainant provides a screenshot showing that the disputed domain name is listed for sale through the <sedo.com> marketplace with a minimum required offer of $899.00, less than a month after registration of the disputed domain name. Complainant argues the price is far in excess of Respondent’s registration costs, and the Panel agree, and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also contends that Respondent registered and uses the <visualcomfrot.com> domain name in bad faith as Respondent has a history of bad faith registration. A respondent’s prior adverse UDRP decisions can demonstrate bad faith per Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). Here, Complainant argues that Respondent has been the defendant in at least 150 UDRP actions before the Forum, in which a domain name was transferred to the rightful owner of the trademark in light of bad faith registration by Respondent. See e.g., HRB Innovations, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1880758 (Forum Feb. 28, 2020); Morgan Stanley v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1861329 (Forum Oct. 3, 2019). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Next, Complainant contends that Respondent registered and uses the <visualcomfrot.com> domain name in bad faith as Respondent registered a confusingly similar domain name and uses it in connection with pay-per-click hyperlinks. Using a confusingly similar domain name in connection with pay-per-click hyperlinks can evidence bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Here, Complainant argues that Respondent uses a confusingly similar domain name to divert consumers to a click-through link farm. Therefore, the Panel may find Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s bad faith is evidenced by Respondent’s use of typosquatting and malware software. Per Policy ¶ 4(a)(iii), the purposeful misspelling of a mark constitutes typosquatting which is itself evidence of bad faith. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Additionally, using a disputed domain name in connection with malware distribution is evidence of bad faith per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). Here, Complainant contends that Respondent engages in typosquatting because Respondent inverts the “o” and “r” from Complainant’s trademark and intentionally misspells the trademark to form a confusingly similar domain name. Complainant also provides screenshots showing that Respondent uses the disputed domain name to deliver malicious websites. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <visualcomfrot.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 6, 2021
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