RetailMeNot, Inc. v. Above.com Domain Privacy
Claim Number: FA1510001641195
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ratailmenot.com>, registered with Above.com Pty Ltd.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2015; the Forum received payment on October 6, 2015.
On October 8, 2015, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <ratailmenot.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 October 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@ratailmenot.com. Also on October 8, 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 November 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it owns the RETAILMENOT mark through common law rights. Complainant demonstrates its common law rights through continuous use since at least as early as October 30, 2006. Further, Complainant owns numerous trademark registrations for its RETAILMENOT marks, including registrations in the US, Canada, Australia, WIPO (covering the European Community Trademark registry, Australia, China, South Korea, and Singapore), and more. In 2013, Complainant had over 697 million visits to its websites during the three-month period ending December 31, 2014, more than 13.7 mobile application downloads, and more than 35.1 million e-mail subscribers. It had more than 21 million monthly mobile unique users of its mobile apps. Complainant generated $264.6 million in revenue in fiscal year 2014, $209.8 million in 2013, $144.6 million in 2012, $80.4 million in 2011, and $16.8 million in 2010. In the same years, RetailMeNot spent $90.0 million in advertising in 2014, $70.3 million in 2013, $40.6 million in 2012, $15.3 million in 2011, and $5.6 million in 2010. The revenues are largely generated by its brand services. Approximately twenty percent of the 2014 revenues were attributable to non-US operations.
Complainant alleges that the disputed domain name is confusingly similar to the RETAILMENOT mark, because Respondent has simply misspelled the word “retail.” Respondent has also added the generic top-level domain (“gTLD”) “.com” to the mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the available WHOIS information lists a privacy service as registrant, but the last available registrant was the “noted cybersquatter” by the name of “Algon Domains/Alberto Gonzales.” Additionally, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to operate a website that phishes for Internet users’ personal information. Further, Respondent’s website also occasionally attempts to download malware on to Internet users’ computers. Finally, Respondent’s typosquatting behavior is additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name to attract Internet users to its own website for commercial gain. Further, Respondent uses the disputed domain name to attempt to download malware on to unsuspecting Internet users’ computers. Finally, Respondent’s typosquatting behavior is further evidence of bad faith. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the trademark RETAILMENOT, dating back to October 30, 2006.
The disputed domain name was registered on December 14, 2007.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to point to web site that phishes for Internet users’ personal information. Further, Respondent’s website also occasionally attempts to download malware on to Internet users’ computers.
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 uses the RETAILMENOT mark in connection with its business in offering online coupon and advertising services. Complainant has provided evidence that it has common law trademark rights. This is sufficient to establish rights under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
The disputed domain name is confusingly similar to the RETAILMENOT mark, as Respondent has simply misspelled the word “retail” and attached the gTLD “.com.” First, previous panels have almost always held that the gTLD “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Additionally, panels have also held that the simple misspelling of a mark is not a sufficient change to a mark to escape the realm of confusing similarity. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed domain name: the WHOIS information lists a privacy service as registrant and the last available registrant was the apparent cybersquatter, “Algon Domains/Alberto Gonzales.” Previous panels have often looked to the WHOIS information to determine whether or not a respondent is commonly known by a disputed domain name. Respondent has failed to provide a response to refute any of Complainant’s contentions. Thus, given the lack of information to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to phish for Internet users’ personal information through a fake survey. Past panels have held that phishing for an Internet user’s personal information does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. 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).”). Thus the Panel finds that Respondent’s phishing behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Additionally, Respondent also uses the disputed domain name to attempt to download malware onto unsuspecting Internet users’ computers. This is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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).
Finally, Respondent’s disputed domain name is a typosquatted version of Complainant’s RETAILMENOT mark, which further demonstrates a lack of rights or legitimate interests in the disputed domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as noted above, Respondent uses the disputed domain name for phishing purposes, which constitutes bad faith use under Policy ¶ 4(b)(iv). Respondent uses the disputed domain name to operate a fake survey, in which Respondent attempts to gain access to Internet users’ personal information. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Further, as noted above, Respondent also uses the disputed domain name to attempt to download malware onto unsuspecting Internet users’ computers. Past panels have held that such behavior is consistent with a finding of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). Consequently, the Panel finds that Respondent’s behavior is indicative of bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent’s typosquatting behavior demonstrates bad faith under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Thus, the Panel finds that Respondent’s typosquatting behavior is bad faith under 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 <ratailmenot.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 3, 2015
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