SRS Distribution Inc. v. Wis INC
Claim Number: FA2203001986772
Complainant is SRS Distribution Inc. (“Complainant”), represented by Linda Merritt of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Wis INC (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roofhubpro.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2022; the Forum received payment on March 3, 2022.
On March 4, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <roofhubpro.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 March 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2022 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@roofhubpro.com. Also on March 8, 2022, 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 4, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, SRS Distribution Inc., operates a software and services business allowing users to track and monitor orders related to roofing and building materials. Complainant asserts rights in the ROOF HUB mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,953,359, registered Jan. 07, 2020). Respondent’s <roofhubpro.com> domain name is identical or confusingly similar to Complainant’s ROOF HUB mark, only differing by omitting a space between words in the mark, adding the term “pro,” and appending the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <roofhubpro.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the ROOF HUB mark. Additionally, Respondent fails to use the disputed domain name for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent directs users to a website offering pay-per-click advertisements which link to Complainant’s competitors. Respondent is also offering the disputed domain name for sale. Furthermore, Respondent may use the disputed domain name in furtherance of a malware distribution scheme.
Respondent registered and uses the <roofhubpro.com> domain name in bad faith. First, Respondent is offering the disputed domain name for sale at a price far in excess of typical out-of-pocket costs to register a domain name. Second, Respondent has used the disputed domain name to host monetized hyperlinks to products and services which compete directly with Complainant’s business. Such use may demonstrate both bad faith disruption and attraction to commercial gain. Additionally, Respondent has used the disputed domain name to distribute malware to unsuspecting Internet users. Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ROOF HUB mark, and at minimum was put on constructive notice based on Complainant’s trademark registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <roofhubpro.com> domain name.
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 asserts rights in the ROOF HUB mark based on registration with the USPTO (e.g., Reg. No. 5,953,359, registered Jan. 07, 2020). Registration of a mark with a national trademark authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the ROOF HUB mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <roofhubpro.com> domain name is identical or confusingly similar to Complainant’s ROOF HUB mark, as it uses the entirety of Complainant’s mark, omits a space between the words in the mark, and merely adds the term “pro” and the “.com” gTLD. Past Panels have found that such changes do not sufficiently distinguish a domain name from an otherwise identical mark under Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s ROOF HUB mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <roofhubpro.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the ROOF HUB mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use another’s trademark may indicate that a Respondent is not commonly known by a disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information of record identifies “Wis INC” as the registrant of the disputed domain name, and nothing within the record suggests Complainant authorized Respondent’s use of the ROOF HUB mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <roofhubpro.com> domain name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use, but instead uses it to host a website offering monetized advertisements linking to Complainant’s competitors. Such use generally does not qualify as either a bona fide offer or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”). Complainant provides screenshots of the resolving landing page for the disputed domain name, which displays a parked website offering links to Complainant’s competitors. The Panel finds that Respondent fails to use the disputed domain name for any bona fide offer of goods or services or for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent is offering the <roofhubpro.com> domain name for sale for a price in excess of out-of-pocket costs. Offering an infringing domain name for sale does not establish a bona fide offering of goods, and it cannot qualify as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Collective Brands Cooperatief U.A. v. ecole c/o Eric Cole, FA1006001328023 (Forum July 8, 2010) (“The Panel finds that general offers to sell the disputed domain name do not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use in keeping with Policy ¶¶ 4(c)(i) or 4(c)(iii).”). The WHOIS information for the disputed domain name indicates that Respondent has offered the domain for sale at a cost of $1,969.00 plus $19.99 per year. This is evidence that Respondent lacks rights and legitimate interests in respect of the domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent uses the <roofhubpro.com> domain name to conduct a malware distribution scheme. Using a domain name to distribute malware on unsuspecting Internet users’ devices cannot create rights or legitimate interests in an infringing domain name under Policy ¶¶ 4(c)(i) or (iii). 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 Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant provides both an email from a victim of this malware scheme and a screenshot of Complainant’s website offering software to “prevent being tracked” as evidence of Respondent’s malware distribution. The Panel finds that Respondent’s use of the domain name to distribute malware demonstrates a lack of rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant also argues that Respondent uses the <roofhubpro.com> domain name to host pay-per-click hyperlinks to Complainant’s competitors. Past Panels have found that such use may demonstrate bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). 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).”). Complainant has provided screenshots of the resolving webpage for the disputed domain name as evidence that Respondent uses the domain name to provide links to Complainant’s competitors. This is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent uses the disputed domain name to distribute malware. Using an infringing domain name to spread malware qualifies as bad faith under 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)”). As previously noted, Complainant provides evidence that Respondent uses the domain name to deliver malicious software to unsuspecting Internet users. This is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant maintains that Respondent registered the <roofhubpro.com> domain name with actual knowledge or was at least put on constructive notice of Complainant’s rights in the ROOF HUB mark. The Panel may disregard any arguments based on constructive notice, as it is insufficient to support a finding of bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to demonstrate bad faith, and may be established by the notoriety of Complainant’s mark and the use Respondent makes of the disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent must have had actual knowledge of Complainant’s ROOF HUB mark based on the similarity between the disputed domain name and Complainant’s mark, and Respondent’s use of the domain name to host links to Complainant’s competitors. The Panel finds from the fame of the mark and the use made of the domain name that Respondent had actual notice of Complainant’s rights in the mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <roofhubpro.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
April 5, 2022
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