DECISION

 

Scribe Opco, Inc., d/b/a Koozie Group v. Domain Administrator / Dvlpmnt Marketing, Inc.

Claim Number: FA2104001942359

 

PARTIES

Complainant is Scribe Opco, Inc., d/b/a Koozie Group (“Complainant”), represented by Jonathan G. Polak of Taft Stettinius & Hollister LLP, Indiana, USA. Respondent is Domain Administrator / Dvlpmnt Marketing, Inc. (“Respondent”), St. Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <koozie.us>, registered with DNC Holdings, Inc..

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 21, 2021; the Forum received payment on April 21, 2021.

 

On April 21, 2021, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <koozie.us> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On April 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@koozie.us.  Also on April 26, 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 May 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 the usTLD 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 usTLD Policy, usTLD 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is a company producing promotional products. Respondent has rights in the KOOZIE mark through its registrations with multiple trademark authorities (e.g. United States Patent and Trademark Office

(“USPTO”) and the Mexican Institute of Industrial Property (“MIIP”) (e.g. Reg. No. 3,240,989, registered May 15, 2007 (USPTO); Reg. No. 843,021, registered Oct. 6, 2014 (MIIP)). See Compl. Exs. B – G. Respondent’s <koozie.us> domain name is identical or confusingly similar to Complainant’s KOOZIE mark as it incorporates the mark in its entirety and adds the “.us” country code top-level domain (“ccTLD”).

2.    Respondent lacks rights and legitimate interests in the <koozie.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its KOOZIE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead diverts internet users to a website offering competing pay-per-click links.

3.    Respondent registered and/or uses the <koozie.us> domain name in bad faith. Respondent exhibits a pattern of bad faith registration of domain names. Additionally, Respondent attracts internet users for commercial gain by hosting competing pay-per-click links on the disputed domain name’s resolving website.

 

B.   Respondent

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <koozie.us> domain name is confusingly similar to Complainant’s KOOZIE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <koozie.us> domain name.

 

3.    Respondent registered or used the <koozie.us> domain name in bad faith.

 

DISCUSSION

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the KOOZIE mark through its registrations with multiple trademark authorities (e.g. USPTO Reg. No. 3,240,989, registered May 15, 2007; MIIP Reg. No. 843,021, registered Oct. 6, 2014). See Compl. Exs. B – G. Registration with multiple trademark agencies, including the USPTO, is generally considered demonstrative of rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <koozie.us> domain name is identical or confusingly similar to Complainant’s KOOZIE mark. Under Policy ¶ 4(a)(i), adding the “.us” ccTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark.  The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). The disputed domain name incorporates Complainant’s KOOZIE mark in its entirety and adds the “.us” ccTLD. Therefore, the Panel agrees and finds that Respondent’s domain name is identical or confusingly similar under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent is not commonly known by the <koozie.us> domain name, nor has Complainant authorized or licensed Respondent to use its KOOZIE mark in the disputed domain name. Under Policy ¶ 4(c)(iii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while the absence of evidence demonstrating otherwise may affirm a Complainant’s contention that it has not authorized or licensed a Respondent to use its mark in 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.”). Here, the WHOIS of record identifies Respondent as “DVLPMNT MARKETING, INC.”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its KOOZIE mark in the disputed domain name. See Amend. Compl. Ex. A. Therefore, the Panel agrees and finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).

 

The Panel further finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant argues that Respondent does not use the <koozie.us> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶ 4(c)(ii) and (iv), using a disputed domain name to divert internet users to a disputed domain name’s resolving website, where Respondent hosts parked, competing pay-per-click links is generally not considered a bona fide offering of goods or services. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which features various parked pay-per-click links advertising various promotional products. See Compl. Exs. H and I. Thus, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).

 

Registration or Use in Bad Faith

Complainant argues that Respondent has exhibited a pattern of bad faith registration. Under Policy ¶ 4(b)(ii), a demonstrated history of a Respondent as a party to UDRP cases where the domain name at issue was found to be registered in bad faith may be demonstrative of a pattern of such behavior. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Complainant provides a list of past UDRP cases where Respondent was allegedly a party and had its domain names transferred. See Compl. pp. 7 – 8. Therefore, the Panel agrees and finds Respondent has exhibited a pattern of bad faith registration of disputed domain names under Policy ¶ 4(b)(ii).

 

Complainant argues that Respondent registered and uses the <koozie.us> domain name for bad faith attraction for commercial gain by hosting pay-per-click links at the disputed domain. Under Policy ¶ 4(b)(iv), using a disputed domain name to divert internet users to a website containing competing pay-per-click links is generally considered bad faith attraction for commercial gain. See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving websites, which feature parked pay-per-click links to websites offering “promotional materials” for sale. See Compl. Exs. H and I. Therefore, the Panel agrees and finds Respondent registered and/or uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <koozie.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 1, 2021