Q Interactive v. MegaWeb.com Inc.
Claim Number: FA0812001240324
PARTIES
Complainant is Q Interactive (“Complainant”), represented by Ian Ballon, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coolsaving.com>,
registered with Tucows 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.
The Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 30, 2008; the National Arbitration Forum received a
hard copy of the Complaint on December 31, 2008.
On December 30, 2008, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <coolsaving.com>
domain name is registered with Tucows Inc. and that Respondent is the current
registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On January 5, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 26, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@coolsaving.com by e-mail.
Respondent submitted an electronic Response on January 29, 2009. This Response was deemed deficient pursuant to ICANN Rule 5 because it was received after the deadline for submissions and in electronic copy only. The Panel, in its discretion, will consider the Response. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (deciding to consider the respondent’s response even though it was deficient because it provided useful information to the panel in making its decision).
On February 6, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Respondent’s <coolsaving.com> domain name is confusingly similar to Complainant’s COOLSAVINGS mark. Respondent does not have any rights or legitimate interests in the <coolsaving.com> domain name. Respondent registered and used the <coolsaving.com> domain name in bad faith.
B. Respondent
Respondent contends that the disputed domain name consists
of two common English words, “cool” and “savings,” that have meanings apart
from Complainant’s use of the COOLSAVINGS mark.
Respondent contends that its use of the disputed domain name to
display advertisements constitutes a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
FINDINGS
Founded in 1995, Complainant Q Interactive
(“Q”) is a corporation that provides digital marketing services that help
advertisers reach their target consumers and assist online publishers to better
monetize their online audience. Each
year, more than 1,000 leading brands rely upon Q’s consultation services. Q also owns its own branded websites. Its longest running and most well-known
website is CoolSavings, located at <coolsavings.com> and accessible
throughout the Unites States and around the world. Started in 1996, CoolSavings is a consumer
website that allows consumers to take advantage of money-saving coupons and
offers from some of the biggest brands in the world. In addition, the CoolSavings website provides
helpful tips in the form of articles and newsletters, free recipes,
sweepstakes, free trials, and free samples.
Q owns two
Respondent, MegaWeb.com Inc., registered the
disputed domain name <coolsaving.com>
on April 18, 1998. The website
associated with the disputed domain name links to a pay-per-click site, which
links to goods and services that are closely related to the goods and services
offered by Q on its CoolSavings website, including links to services that are
competitive with those of Q.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant’s registration of the COOLSAVINGS mark with the USPTO (U.S. Reg. No. 2,148,278 issued March 31, 1998) sufficiently establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Respondent’s disputed <coolsaving.com> domain name includes Complainant’s COOLSAVINGS mark while: (1) omitting an “s” from the mark; and (2) adding the generic top-level domain “.com.” The addition of a top-level domain is immaterial under Policy ¶ 4(a)(i) as such an element is required of every domain name. Moreover, previous panels have held that the omission of a letter from a mark fails to create a meaningful distinction between the domain name and the mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity).
Accordingly, the Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
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), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. 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.”).
Respondent has not supplied any evidence that it is commonly known by the disputed domain name. The registrant of record under the WHOIS information is listed as “MegaWeb.com Inc.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s
disputed domain name resolves to a website that displays advertisements for
Complainant’s direct competitors. The
Panel presumes that Respondent is commercially benefiting from this use by
garnering click-through referral fees.
The Panel finds that this fails to constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See ALPITOUR S.p.A. v.
Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the
respondent’s contention of rights and legitimate interests in the
<bravoclub.com> domain name because the respondent was merely using the
domain name to operate a website containing links to various competing
commercial websites, which the panel did not find to be a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking Complainant's
website to a website of Respondent and for Respondent's benefit is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
disputed domain name resolves to a website that promotes Complainant’s direct
competitors through links and advertisements.
The Panel finds that Respondent primarily intended to disrupt
Complainant’s business, which would support a finding of bad faith registration
and use under Policy ¶ 4(b)(iii). See David
The Panel presumes that Respondent
is commercially benefiting from the placement of these third-party links and
advertisements through the receipt of referral fees. Therefore, the Panel finds that Respondent’s
disputed domain name has created a likelihood of confusion as to Complainant’s
source or affiliation with the disputed domain name and corresponding
website. The Panel finds bad faith
registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Asbury Auto. Group, Inc. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coolsaving.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: February 23, 2009
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