WOOT, Inc. v. private customer c/o Rahul.redregister
Claim Number: FA0903001251616
Complainant is WOOT, Inc. (“Complainant”), represented by P. Weston Musselman, of Fish & Richardson P.C., Texas, USA. Respondent is private customer c/o Rahul.redregister (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wootinc.com>, registered with Red Register, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 11, 2009.
On April 13, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <wootinc.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. has verified that Respondent is bound by the Red Register, 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 April 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 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@wootinc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wootinc.com> domain name is confusingly similar to Complainant’s WOOT mark.
2. Respondent does not have any rights or legitimate interests in the <wootinc.com> domain name.
3. Respondent registered and used the <wootinc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Woot, Inc., uses its WOOT mark in connection with its retail store services for electrical items and other goods. Complainant registered its WOOT mark with the United States Patent and Trademark Office on November 8, 2005 (Reg. No. 3,012,788).
Respondent registered the disputed domain name on February 23, 2007. The disputed domain name resolves to a website that attempts to download malicious computer software onto the computers of Internet users who visit the disputed 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has provided evidence of the registration of its WOOT mark with the USPTO. The Panel finds this sufficiently demonstrates Complainant’s rights in its WOOT mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The disputed domain name is confusingly similar to its WOOT mark because it contains the entire mark with the addition of “inc,” referring to Complainant’s business incorporation status, and the addition of the generic top-level domain “.com.” The Panel finds these alterations do not detract from the dominant WOOT element of the mark, and finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel finds Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant asserts Respondent is using the disputed domain name to entice Internet users to a website that attempts to download malicious software onto the computers of those who visit the website. The Panel finds Respondent’s attempt to ensnare Internet users is not 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 Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) (finding that the respondent was using the disputed domain name to resolve to a website that attempted to download malware onto Internet users’ computers, which was not 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 also 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding no bona fide offering of goods and services when the respondent used the disputed domain name for the distribution of malware or hostile software).
Respondent is not commonly known by the disputed domain
names. The WHOIS information lists
Respondent as “private customer c/o
Rahul.redregister,” and the record provides no evidence under which the Panel
could conclude that Respondent is, or ever has been, commonly known by the
disputed domain name. Thus, the Panel
finds that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii). See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the confusingly similar disputed domain name lure Internet users to a website that attempts to download malicious software onto an Internet user’s computer. The Panel assumes Respondent profits from this use through the receipt of fees, or from gathering information through the malicious software in order to use to obtain some form of revenue. Respondent’s use is an attempt to profit from the disputed domain name by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. Therefore, the Panel finds Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith registration and use.); see also Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) (finding that the respondent’s use of the disputed domain name to introduce malware onto Internet users’ computers is presumably an attempt by the respondent to profit from the confusingly similar disputed domain name through the receipt of fees for engaging in this behavior or the use of information gained from the malware software to obtain some form of revenue and is thus evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wootinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 29, 2009
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