RetailMeNot, Inc. v. Shahzad Raza / Media Innovationz
Claim Number: FA1411001588409
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, US. Respondent is Shahzad Raza / Media Innovationz (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <retailmenotpro.com>, registered with CV. Jogjacamp.
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 November 4, 2014; the National Arbitration Forum received payment on November 4, 2014.
On November 4, 2014, CV. Jogjacamp confirmed by e-mail to the National Arbitration Forum that the <retailmenotpro.com> domain name is registered with CV. Jogjacamp and that Respondent is the current registrant of the name. CV. Jogjacamp has verified that Respondent is bound by the CV. Jogjacamp 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 November 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@retailmenotpro.com. Also on November 5, 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 December 5, 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 <retailmenotpro.com> domain name is confusingly similar to Complainant’s RETAILMENOT mark.
2. Respondent does not have any rights or legitimate interests in the <retailmenotpro.com> domain name.
3. Respondent registered and uses the <retailmenotpro.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns registrations for the RETAILMENOT mark through the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,935,181, registered Mar. 22, 2011). Complainant uses the RETAILMENOT in connection with online coupon and advertising services for retail.
Respondent registered the <retailmenotpro.com> domain name on September 30, 2014, and uses it to pass itself off as Complainant and to conduct a phishing scheme.
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.”).
The Panel finds that Complainant’s registration for its RETAILMENOT mark with the USPTO demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i), despite Respondent’s apparent residence in Pakistan. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Respondent’s <retailmenotpro.com> domain name incorporates Complainant’s RETAILMENOT mark and merely adds the non-distinctive term “pro” and the gTLD “.com.” See Cargill, Inc. v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s RETAILMENOT 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 first argues that Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS. The Panel notes that the WHOIS information identifies “Shahzad Raza” as the registrant of record. The Panel finds that there is no basis to find that Respondent is commonly known by the <retailmenotpro.com> domain name. See 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).
Complainant asserts that Respondent uses the disputed domain name for services that are directly competitive with Complainant’s services offered under its RETAILMENOT mark. Complainant shows that the website at
Respondent’s <retailmenotpro.com> includes a near exact copy of Complainant’s website, incorporating a version of Complainant’s logo. The Panel finds that this use is not a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant claims the website resolving form the disputed domain name asks users for their names and e-mail addresses, and allows them to create accounts. The Panel finds that Respondent’s efforts to conduct a phishing scheme is additional evidence that Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has disrupted Complainant’s business by using the disputed domain name to promote coupon advertisements in competition with Complainant. The Panel finds that this use constitutes Policy ¶ 4(b)(iii) bad faith. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent also attempts to pass itself off as Complainant and to conduct a phishing scheme, both of which are emblematic of bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant also argues that Respondent’s use of the disputed domain name demonstrates Respondent’s familiarity with Complainant’s brand, site design, and logo, and therefore must have had actual knowledge of Complainant’s mark when the disputed domain name was registered. The Panel agrees and finds that Respondent had actual knowledge of Complainant and its trademark rights when registering the <retailmenotpro.com> domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. 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.”); Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”).
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 <retailmenotpro.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 10, 2014
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