eWomenNetwork, Inc. v. NULL NULL / N/A
Claim Number: FA1506001622918
Complainant is eWomenNetwork, Inc. (“Complainant”), represented by Jason R. Fulmer of Gardere Wynne Sewell LLP, Texas, USA. Respondent is NULL NULL / N/A (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ewomensnetwork.com>, registered with eNom, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2015; the Forum received payment on June 4, 2015.
On June 9, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <ewomensnetwork.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 June 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2015 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@ewomensnetwork.com. Also on June 16, 2015, 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 July 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
A. Complainant
Complainant owns the EWOMEN mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,257,345, first used in commerce Dec. 30, 2000, filed April 24, 2012, registered Dec. 11, 2012). Complainant provides marketing services for the purpose of promoting the goods and services of women owned businesses via the Internet. The <ewomensnetwork.com> domain name is identical to the EWOMEN mark. The domain name contains Complainant’s mark in full, adds the letter “s” and the word “network,” and attaches the generic top-level domain (“gTLD”) “.com” to the domain name. Therefore, Complainant contends that the disputed domain name is confusingly similar to its trademark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS information suggests that Respondent is commonly known by <ewomensnetwork.com>. Respondent is not affiliated with Complainant and has not been authorized to use the EWOMEN mark. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s resolving website has various content associated with it, including malware, spyware, and other malicious content. On some occasions, the disputed domain name resolves to a blank page, and on other occasions it redirects users to the website of the U.S. Women’s Chamber of Commerce.
Complainant claims that the Respondent has engaged in bad faith registration and use of the <ewomensnetwork.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Respondent was on notice of Complainant and its rights in the EWOMEN mark. Finally, Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <ewomensnetwork.com>, was registered March 16, 2003.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the reasonable and uncontroverted assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of 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."
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 asserts that it owns the EWOMEN mark through registration with the USPTO (Reg. No. 4,257,345, first used in commerce Dec. 30, 2000, filed April 24, 2012, registered Dec. 11, 2012). Complainant states that it provides marketing services for the purpose of promoting the goods and services of women owned businesses via the Internet. The relevant date for determining rights in a registered mark is the date of trademark application filing. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel, therefore, finds that Complainant had established rights in the EWOMEN mark under Policy 4(a)(i), on April 24, 2012.
The Respondent registered the <ewomensnetwork.com> on March 16, 2003, which predates Complainant’s EWOMEN trademark application filing date. When a disputed domain name predates a registration and filing date of a trademark, Complainant may establish Common Law rights through evidence of prior use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
The Complainant began using the EWOMEN mark in 2000, and registered the <ewomennetwork.com> domain name on August 21, 2000. See Compl., at Attached Ex. C. Further, Complainant argues that it has invested substantial sums of money in connection with promoting its services under the EWOMEN mark; however, Complainant has not provided documentation of such expenditures. As this Panel is accepting the reasonable allegations of the Complainant as true, this Panel accepts this representation. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”).
Therefore, the Complainant has established evidence of Common Law rights pursuant to Policy ¦ 4(a)(i).
Complainant alleges that the <ewomensnetwork.com> domain name is confusingly similar to the EWOMEN mark. The domain name contains Complainant’s mark in full, adds the letter “s” and the word “network,” and attaches the gTLD “.com” to the domain name. Merely adding the letter “s” to a complainant’s mark does not change the overall impression of confusing similarity. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of a generic word also does not excuse the confusing similarity generated by a disputed domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The addition of a gTLD to a registered mark is irrelevant to ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Accordingly the Panel finds that Respondent’s <ewomensnetwork.com> domain name is confusingly similar to the EWOMEN mark.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS information suggests that Respondent is known by <ewomensnetwork.com>. The WHOIS information for the disputed domain name lists “NULL NULL / N/A” as the registrant of record. See Compl., at Attached Ex. D. Further, Complainant claims that Respondent is not affiliated with Complainant and has not been authorized to use the EWOMEN mark. As Respondent has failed to respond with any contentions to refute these allegations, the Panel agrees that Respondent is not commonly known by the disputed domain name, and therefore lacks rights to the disputed domain name under Policy ¶ 4(c)(ii). 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 insists that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent’s resolving website has various content associated with it, including malware, spyware, and other malicious content. Complainant states that on some occasions, the disputed domain name resolves to a blank page, and on other occasions it redirects users to the website of the U.S. Women’s Chamber of Commerce. Screen shots from the resolving websites are included in Complainant’s Complaint. Prior panels have found that these various uses are neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark 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 also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
In light of these unrebutted contentions, the Panel finds Respondent’s disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(a)(ii) and therefore lacks rights or legitimate interests in or to the disputed domain name.
Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant argues that Respondent’s use of the disputed domain name drives Internet traffic to third party sites, such as the U.S. Women’s Chamber of Commerce website. Previous panels have found that such actions constitute bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant alleges that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant submits that Respondent registered the disputed domain name for the purpose of luring unwary Internet users for its own financial benefit. Redirecting Internet traffic to competing websites and incorporating malware are both evidence of bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Therefore, the Panel finds that Respondent has participated in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent was on notice of Complainant and its rights in the EWOMEN mark. Complainant argues that Respondent knew or should have known of Complainant’s rights due to its trademark registration. While Complainant believes that constructive notice is sufficient to support a claim of bad faith use and registration of a disputed domain name, there seems to be a trend in UDRP proceedings to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). Regardless of how the Panel feels about this trend, here, redirecting Internet traffic to the U.S. Women’s Chamber of Commerce website provides substantial evidence that Respondent knew enough about Complainant’s business and offerings to direct traffic to a similar website.
As such, the Panel finds that, given the totality of the circumstances, that Respondent had actual knowledge of Complainant’s rights in or to its well-known trademark and, as such, Respondent engaged in bad faith use and registration under Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Complainant asserts that it also has rights in the “eWomenNetwork” mark. Users here would merely need to mistype Complainant’s mark by adding an “s” after “women” to be mistakenly led to Respondent’s <ewomensnetwork.com> website rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Therefore, the Panel finds that Respondent engaged in typosquatting and this, too, establishes Respondent’s bad faith use and registration of the disputed domain name pursuant to 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 <ewomensnetwork.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: July 14, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page