R. R. Donnelley & Sons Company v. Kathryn Hostetler / R. R. Donnelley & Sons Company
Claim Number: FA2203001989405
Complainant is R. R. Donnelley & Sons Company (“Complainant”), represented by Meaghan Kent of Venable LLP, District of Columbia, USA. Respondent is Kathryn Hostetler / R. R. Donnelley & Sons Company (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rrdonnelleysonscompany.com>, registered with Google 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2022; the Forum received payment on March 23, 2022.
On March 23, 2022, Google LLC confirmed by e-mail to the Forum that the <rrdonnelleysonscompany.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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@rrdonnelleysonscompany.com. Also on March 29, 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 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Pursuant to Policy ¶ 4(j) all decisions under the Policy are to be published over the internet in-full except that a panel may determine, in exceptional cases, that portions of its decision be redacted. On April 1, 2022, the Forum, as the dispute resolution provider in the instant case, received email communications from Complainant stating that someone identifying as the nominal Respondent (yet responding from an email address different than that found in the relevant WHOIS data) had contacted Complainant and indicated she was not the registrant of the at-issue domain name. A finding that the nominal Respondent is not the actual registrant of the at-issue domain name and instead is the victim of identity theft might warrant that Respondent’s identity be redacted in the instant decision so that the named Respondent will not be unfairly, falsely, and publically associated with any adverse findings set out therein. However, there is insufficient evidence to make such a finding. Aside from Complainant’s email there is no evidence supporting identity theft by the domain name’s de facto registrant. Given that there is insufficient evidence to conclude that there has been identity theft in connection with the at-issue domain name’s registration there is likewise no basis to redact any information in the Panel’s published decision. Alternatively, the fact that neither party has requested a redaction of a portion of the published decision makes any finding regarding identity theft by an unnamed party inconsequential and thus irrelevant.
A. Complainant
Complainant contends as follows:
Complainant is a multichannel business communications and marketing company.
Complainant has rights in the RR DONELLEY mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <rrdonelleysonscompany.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds words the “sons company”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the<rrdonelleysonscompany.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its RR DONELLEY mark in the at-issue domain name. 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 holds the disputed domain name passively.
Respondent registered and uses the <rrdonelleysonscompany.com> domain name in bad faith. Respondent holds the domain name passively. Respondent had actual knowledge of Complainant’s rights in the RR DONNELLEY mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, the dispute resolution provider has received an email from Complainant recounting an email it received purporting to be from the named Respondent wherein the sender indicates that it did not register the at-issue domain name.
Complainant has trademark rights in the RR DONNELLEY mark.
Respondent registered the at-issue domain name after Complainant acquired rights in RR DONNELLEY.
Complainant’s has not authorized Respondent to use Complainant’s trademark.
Respondent holds the at-issue domain name passively.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for its RR DONNELLEY trademark demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <rrdonelleysonscompany.com> domain name contains Complainant’s RR DONNELLEY trademark less its space, followed by the terms “sons” and “company,” with all followed by the“.com” top-level domain name. The differences between Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <rrdonelleysonscompany.com> domain name is confusingly similar to Complainant’s RR DONNELLEY trademark 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, Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name ultimately shows “Kathryn Hostetler” of “R.r. Donnelley & Sons Company” as the domain name’s registrant and there is no evidence before the Panel that otherwise indicates Respondent is commonly known by the <rrdonelleysonscompany.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Browsing to <rrdonelleysonscompany.com> returns a webpage displaying no substantive content while stating that “This site can’t be reached”. Respondent’s passive holding of the at-issue domain name indicates 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). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”); see also, Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”).
Given the forgoing, Complainant conclusively demonstrates Respondent’s lack of rights and lack of interests in the <rrdonelleysonscompany.com> domain name.
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent fails to make active use of the domain name as the domain name returns only an error message and features no substantive content. Respondent’s passive holding of <rrdonelleysonscompany.com> nevertheless shows Respondent’s bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the RR DONNELLEY mark when it registered <rrdonelleysonscompany.com> as a domain name. Respondent’s prior knowledge of Complainant’s trademark is primarily evident because of the mark’s notoriety. Respondent’s registration and holding of <rrdonelleysonscompany.com> with knowledge of Complainant’s rights in RR DONNELLEY and thus <rrdonelleysonscompany.com> demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See 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).”); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rrdonnelleysonscompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 27, 2022
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