Clover Technology Group, LLC v. RANDY WEBSTER
Claim Number: FA1507001630866
Complainant is Clover Technology Group, LLC (“Complainant”), represented by Ulrika E. Mattsson of McDermott Will & Emery LLP, Illinois, USA. Respondent is RANDY WEBSTER (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <funding-factory.com> ('the Domain Name'), 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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2015; the Forum received payment on July 28, 2015.
On July 29, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <funding-factory.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 August 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@funding-factory.com. Also on August 4, 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 August 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant's submissions can be summarised as follows:
Complainant is a leading supplier of after market products and services to the printer supplies and cellular industries. It owns trade mark registrations in the USA since 2000 including FUNDING FACTORY for electronic device and printer cartridge recycling and fundraising programs for schools, charities, churches, community groups and clubs. Complainant uses its web site at www.fundingfactory.com to offer charitable fund raising services
The Domain Name was registered in 2014 and is confusingly similar to the Complainant’s well known and registered FUNDING FACTORY marks. It incorporates the Complainant’s FUNDING FACTORY mark with the insertion of a hyphen between the two words. Consumers who view the Domain Name are likely to associate it with the Complainant, its mark and its services. The insertion of a punctuation mark does not result in a materially different distinctive mark.
Respondent does not have any rights or legitimate interests in the Domain Name. There is no indication that it is commonly known by the Domain Name. The WHOIS lists the registrant as Randy Webster. Respondent is using the Domain Name to operate a web site that until recently offered pornographic content. Complainant has never authorised the Respondent to use the Domain Name. There is no affiliation or connection between Respondent and Complainant. Use of the Domain Name that is confusingly similar to Complainant's FUNDING FACTORY marks to redirect users interested in Complainant’s services to a web site that provides pornographic content and tarnishes the Complainant’s mark is not a bona fide use in relation to goods and services.
Respondent's conduct constitutes trade mark infringement and cybersquatting. Respondent registered the Domain Name primarily for deceiving consumers into accessing Respondent's web site featuring pornographic content and thereby disrupting and tarnishing Complainant's business. Respondent intends to attract Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site. Bad faith can be inferred by registration of a well-known mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. It did, however, indicate by e mail that it consented to transfer the Domain Name to the Complainant.
Complainant is a leading supplier of aftermarket products and services to the printer supplies and cellular industries. It owns trade mark registrations in the USA since 2000 including FUNDING FACTORY for electronic device and printer cartridge recycling and fundraising programs for schools, charities, churches, community groups and clubs. Complainant uses its web site at www.fundingfactory.com to offer charitable fund raising services
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 Domain Name consists of the Complainant’s registered FUNDING FACTORY mark, a hyphen and the generic gTLD.com. Punctuation marks, such as hyphens and gTLDs are typically irrelevant in the determination of confusing similarity. See Health Device Corp v Aspen STC FA 158254 (Nat. Arb. Forum July 1, 2003) ('The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a) (i)) See also Isleworth Land Co. v Lost In Space SA, FA 117330 (Nat. Arb. Forum Sept 27, 2002) ('It is a well-established policy that generic top level domains are irrelevant when conducting a Policy 4(a) (i) analysis.) Accordingly, the addition of a hyphen and the gTLD .com does not serve to distinguish the Domain Name from the Complainant's FUNDING FACTORY trade mark. As such the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
The Respondent has not filed a Response and does not appear to have any trade marks associated with the name FUNDING FACTORY. There is no evidence that it is commonly known by this name and it does not have any consent from the Complainant. It does not contest transfer of the Domain Name to the Complainant. Prior panels have held that pointing a domain name containing a trade mark to adult content for commercial purposes does not constitute a bona fide offering of services of its own. See Target Brands, Inc. v Bealo Group SA, FA 128684 (Nat. Arb. Forum Dec 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult orientated web site did not equate to a bona fide offering of goods and services under Policy 4 (c) (i).) Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4 (b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on‑line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. The Panelist finds that the Respondent has attempted to cause confusion amongst Internet users between the Complainants’ marks and its Domain Name for commercial gain.
Further, past panels have held that using a disputed domain name to display adult content indicates bad faith. See Wells Fargo & Co. v Party Night Inc., FA 144647 (Nat Arb Forum) Mar 18 2003) (finding bad faith registration and use where the respondent was using the disputed domain name to point to adult orientated web sites and thereby tarnishing the Complainant’s mark.)
The Respondent does not deny knowledge of the Complainant and has consented to transfer of the Domain Name to the Complainant.
As such the Panelist finds that the Complainant has made out its case under para 4 (b)(iv) of the Policy. Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <funding-factory.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<29 August, 2015>>
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