Liebert Corporation v. Ryan Murphy / Liebertups
Claim Number: FA1509001638591
Complainant is Liebert Corporation (“Complainant”), Ohio, United States. Respondent is Ryan Murphy / Liebertups (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liebertups.com>, registered with Melbourne IT Ltd.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically September 18, 2015; the Forum received payment September 18, 2015.
On September 22, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <liebertups.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd verified that Respondent is bound by the Melbourne IT Ltd registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@liebertups.com. Also on September 22, 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 October 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant is a global manufacturer of power, precision cooling, and infrastructure management systems for mainframe computer, server racks, and critical process systems. Headquartered in Columbus, Ohio, Complainant employs more than 1,800 people across 12 manufacturing plants worldwide. Complainant registered the LIEBERT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,185,650, registered January 12, 1982), which demonstrates its rights in the mark. The <liebertups.com> domain name is confusingly similar to Complainant’s mark as it merely adds the descriptive term “ups” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to a third-party website, <ottmarliebert>, which is wholly unrelated to Complainant and its mark. Additionally, Respondent is offering the disputed domain name for sale in an amount that far exceeds Respondent’s out-of-pocket expenses in registering the domain name.
Respondent registered and is using the disputed domain name in bad faith. First, Respondent is offering the disputed domain name for sale in an amount that exceeds Respondent’s out-of-pocket expenses. Second, Respondent registered and is using the disputed domain name, for commercial gain, to cause confusion among Internet users as to the source of the disputed domain name. Third, Respondent is engaged in the tactic of typosquatting. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
Respondent’s Contentions
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the disputed domain name October 31, 2011.
Complainant established legal rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name containing Complainant’s protected mark in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant is a global manufacturer of power, precision cooling, and infrastructure management systems for mainframe computer, server racks, and critical process systems. Headquartered in Columbus, Ohio, Complainant employs more than 1,800 people across 12 manufacturing plants worldwide. Complainant has registered the LIEBERT mark with the USPTO (e.g., Reg. No. 1,185,650, registered January 12, 1982). Complainant contends that this USPTO registration demonstrates Complainant’s rights in its mark. The Panel notes that Attached Exhibit A includes copies of Complainant’s USPTO registrations. The Panel finds that trademark registrations with the USPTO demonstrate a complainant’s rights in its marks for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <liebertups.com> domain name is confusingly similar to Complainant’s mark as it merely adds the descriptive term “ups” and the gTLD “.com.” Past panels have found that the affixation of the gTLD “.com” does not serve to adequately distinguish a respondent’s disputed domain name from a complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Past panels have also found that the addition of a descriptive term to a complainant’s mark failed to sufficiently differentiate the disputed domain name from the complainant’s mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). For these reasons, the Panel finds here that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Ryan Murphy / Liebertups” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. The Panel is directed to Attached Exhibit B for additional WHOIS information. While Respondent seems to be commonly known by the terms of the disputed domain name, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Complainant argues that Respondent is using the disputed domain name to redirect Internet users to a third-party website, <ottmarliebert>, which is wholly unrelated to Complainant and its mark. Additionally, Respondent is offering the disputed domain name for sale in an amount that far exceeds Respondent’s out-of-pocket expenses in registering the domain name. The Panel is directed to Attached Exhibit D for a screenshot of Respondent’s For Sale webpage; it appears that Complainant made an offer to purchase the disputed domain name for $60.00 but received this response: “Your offer is too low. Premium domain names typically sell for three or four-figure amounts.” Past panels have held that redirecting Internet users who are looking for a complainant to an unrelated website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Past panels have also held that a respondent lacked legitimate rights and interests where it showed a willingness to sell a disputed domain name for an amount in excess of out-of-pocket costs. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). For these reasons, the Panel finds that Respondent is not using the disputed domain name in connection with 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).
Respondent made no offer relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent is offering the disputed domain name for sale in an amount that exceeds Respondent’s out-of-pocket expenses. The Panel notes that Attached Exhibit D contains a copy of Respondent’s For Sale webpage. Previous panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(i) where a respondent offered a domain name for sale for more than its estimated out-of-pocket costs. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent registered and is using the disputed domain name, for commercial gain, to cause confusion among Internet users as to the source of the disputed domain name. In so arguing, Complainant alleges that because the disputed domain name incorporates Complainant’s famous LIEBERT mark in its entirety while adding the generic industry term “ups,” there is no plausible good-faith reason or logic for Respondent to have registered the disputed domain name and the only feasible explanation for Respondent’s registration is that Respondent intends to cause confusion, mistake, and deception by means of the disputed domain name. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent takes advantage of the confusing similarity between its disputed domain name and Complainant’s mark. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent is engaged in the tactic of typosquatting. Past panels have generally defined typosquatting as simple and/or accidental misspellings of a complainant’s mark. See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark, which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)). Because Respondent’s disputed domain name seems not to be a simple and/or accidental misspelling of Complainant’s mark, the Panel finds that Complainant failed in its typosquatting argument pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. In so arguing, Complainant asserts that Respondent selected the domain to intentionally confuse unsuspecting Internet users into visiting an unrelated third party website. The Panel notes that here also Complainant does not provide supporting extrinsic proof that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark pursuant to Policy ¶ 4(a)(iii), Respondent attempted to sell the disputed domain name for an amount in excess of reasonable registration costs. Such conduct alone satisfies the burden.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and held the disputed domain name in bad faith; Complainant satisfied one of the elements of ICANN 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 <liebertups.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 6, 2015
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