CORT Business Services Corporation v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2106001950006
Complainant is CORT Business Services Corporation (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cortoutlet.com>, registered with Media Elite Holdings Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2021; the Forum received payment on June 7, 2021.
On June 9, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <cortoutlet.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 June 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@cortoutlet.com. Also on June 10, 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 July 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant offers furniture rental services. Complainant has rights in the CORT mark through its registrations with numerous trademark agencies throughout the world (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 1,037,674, registered Apr. 6, 1976; Canadian Intellectual Property Office (“CIPO”) Reg. TMA576288, registered Feb. 25, 2003; European Union Intellectual Property Office (“EUIPO”) Reg. 16,303,463, registered Nov. 28, 2018).
2. Respondent’s <cortoutlet.com>[i] domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the word “outlet” and the “.com” generic top-level domain (‘gTLD”).
3. Respondent lacks rights and legitimate interests in the <cortoutlet.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its CORT mark in the domain name.
4. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to the domain name’s resolving website, where Respondent hosts competing pey-per-click links, and may distribute malware.
5. Respondent registered and uses the <cortoutlet.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting competing pay-per-click links on the domain name’s resolving website, and may distribute malware as well.
6. Respondent registered the domain name with knowledge of Complainant’s rights in the CORT mark.
7. Respondent failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CORT mark. Respondent’s domain name is confusingly similar to Complainant’s CORT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cortoutlet.com> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant has rights in the CORT mark through its registrations with numerous trademark agencies throughout the world (e.g. USPTO Reg. 1,037,674, registered Apr. 6, 1976; CIPO Reg. TMA576288, registered Feb. 25, 2003; EUIPO Reg. 16,303,463, registered Nov. 28, 2018). Registration with trademark agencies is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <cortoutlet.com> domain name is identical or confusingly similar to Complainant’s CORT mark as it incorporates the mark in its entirety and adds the word “outlet” along with the “.com” gTLD to the end of the mark. Under Policy ¶ 4(a)(i), adding a generic or descriptive word that relates to a Complainant’s business along with the “.com” gTLD is generally insufficient in differentiating a domain name from the mark it incorporates. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The <cortoutlet.com> domain name incorporates Complainant’s CORT mark and adds the word “outlet”, which may relate to Complainant’s furniture business. It also adds the “.com” gTLD to the end of the mark. Therefore, the Panel holds that Respondent’s <cortoutlet.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <cortoutlet.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <cortoutlet.com> domain name, nor has Complainant authorized or licensed Respondent to use its CORT mark in the domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information, or lack of relevant information as disguised by a WHOIS privacy service, may demonstrate that a Respondent is not commonly known by a domain name. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). The WHOIS of record identifies Respondent as “Domain Administrator” of “Fundacion Privacy Services”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its CORT mark in the <cortoutlet.com> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <cortoutlet.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <cortoutlet.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as Complainant and divert internet users to a website that distributes malware. Under Policy ¶¶ 4(c)(i) and (iii), using a domain name incorporating the mark of another to divert internet users to a resolving website with competing and/or unrelated hyperlinks, or to one that distributes malware is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the <cortoutlet.com> domain name’s resolving website, which feature parked pay-per-click links. Complainant claims that the domain name’s links redirect to sites with malware, although the record contains no evidence of this. The record does support, however, Complainant’s assertion that Respondent does not use the <cortoutlet.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <cortoutlet.com> domain name for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a domain name incorporating the mark of another to divert internet users to a resolving website with competing and/or unrelated hyperlinks, is evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). The record contains screenshots of the <cortoutlet.com> domain name’s resolving website which features parked pay-per-click links. Therefore, the Panel holds that Respondent registered and uses the <cortoutlet.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <cortoutlet.com> domain name with knowledge of Complainant’s rights in the CORT mark. Actual notice is sufficient to demonstrate bad faith, and may be established through the incorporation of a registered mark into a domain name under Policy ¶ 4(a)(iii). See id; see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Because Complainant’s CORT mark is incorporated into the <cortoutlet.com> domain name, the Panel holds that Respondent registered and uses the <cortoutlet.com> domain name with bad faith actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <cortoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 12, 2021
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