Safelite Group, Inc. v. Sulistiya Hartati
Claim Number: FA1408001575077
PARTIES
Complainant is Safelite Group, Inc. (“Complainant”), represented by Thomas A. Walsh of ICE MILLER LLP, Indiana, USA. Respondent is Sulistiya Hartati (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safelitecoupon.net>, registered with GODADDY.COM, LLC.
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 August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 14, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <safelitecoupon.net> 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 August 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2014 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@safelitecoupon.net. Also on August 15, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2014, 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" 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 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
1. Respondent’s <safelitecoupon.net> domain name is confusingly similar to Complainant’s SAFELITE mark.
2. Respondent does not have any rights or legitimate interests in the <safelitecoupon.net> domain name.
3. Respondent registered and uses the <safelitecoupon.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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(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.”).
Complainant’s USPTO registration is sufficient to establish rights in the SAFELITE mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), where the the Panel also found that the Complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations; see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 2007), where the Panel found that it does not matter where the complainant has registered its trademark in the country in which the respondent resides. Accordingly, even though the record indicates that Respondent operates in Indonesia, the Panel finds that Complainant’s USPTO registration satisfies the requirements of Policy ¶ 4(a)(i).
Respondent’s <safelitecoupon.net> domain name is confusingly similar to Complainant’s SAFELITE mark because Respondent has simply added the generic term “coupon” and the generic top-level domain (“gTLD”) “.net.” Previous panels have generally found that the addition of a generic term, such as “coupon”, leads to a finding of confusingly similarity, and that the affixation of gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See, e.g., Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s SAFELITE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant alleges that Respondent is not commonly known by the <safelitecoupon.net> domain name. The WHOIS information identifies “Sulistiya Hartati” as the registrant of the disputed domain name. Complainant asserts that Respondent is neither licensed nor authorized to use the SAFELITE mark. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <safelitecoupon.net> domain name pursuant to Policy ¶ 4 (c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant asserts that Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent uses the disputed domain name to falsely offer coupons for Safelite services and then redirects consumers to solicitations for the American Automobile Association, for Respondent’s commercial gain. Complainant argues that this is not a bona fide use within the meaning of the Policy. Previous panels have found that a respondent’s use of a mark to redirect users to Respondent’s own website for commercial gain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Thus, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <safelitecoupon.net> domain name, and lacks rights or legitimate interest in the domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent created the <safelitecoupon.net> domain name to benefit from Complainant’s reputation in an attempt to divert users seeking Complainant’s website (and/or coupons for Complainant’s services) to Respondent’s website, which does not contain coupons for Safelite services. The Panel agrees and finds that Respondent’s use of the disputed domain name constitutes Policy ¶ 4(b)(iv) bad faith. Previous panels have similarly found bad faith where the respondent attemped to mislead and divert Internet users through a confusingly similar domain name to their own website. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant argues further that Respondent had knowledge of the SAFELITE mark, due to the numerous references to SAFELITE throughout Respondent’s website. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, constituting further evidence of bad faith. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds that 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 <safelitecoupon.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 16, 2014
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