Gainsight, Inc. v. Daniel Fainman
Claim Number: FA1512001653139
The Complainant is Gainsight, Inc. (“Complainant”), represented by Matthew J. Kuykendall of Wilson Sonsini Goodrich & Rosati, California USA. The Respondent is Daniel Fainman (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gainsight.co> and <gainsight.biz>, registered with GoDaddy.com, LLC (the “Disputed domain names).
The FORUM appointed Nathalie Dreyfus to serve as a Panelist.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
The Complainant submitted a Complaint to the Forum electronically on December 18, 2015; the Forum received payment on December 18, 2015.
On December 21, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gainsight.co> and <gainsight.biz> domain names are registered with GoDaddy.com, LLC and that the Respondent is the current registrant of the disputed domain names. GoDaddy.com, LLC has verified that the Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve the domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 by which the Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gainsight.co, postmaster@gainsight.biz. Also on December 22, 2015, the Written Notice of the Complaint, notifying the Respondent of the e-mail addresses served and the deadline for a Response was transmitted to the Respondent via post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 27, 2015.
On December 31, 2015, the FORUM received Additional Submission from the Complainant. This Additional Submission complied with paragraph 7 of the Supplemental Rules.
On December 29, 2015, pursuant to the Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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.
The Complainant requests that the Disputed domain names be transferred from the Respondent to the Complainant.
A. Complainant
Since April 2013, the Complainant has used the GAINSIGHT trademark in connection with its business as a provider of customer relationship management software. The Complainant has rights in the GAINSIGHT trademark based on registration of the trademark through multiple trademark filings including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,849,817, registered November 10, 2015).
According to the Complainant, the Respondent’s domain names <gainsight.co> and <gainsight.biz> are confusingly similar to the GAINSIGHT trademark seeing that they incorporate the GAINSIGHT trademark in its entirety and that the addition of a generic top-level domain (“gTLD”) or a country code top-level domain (“ccTLD”) does not sufficiently distinguish the Disputed domain names from the Complainant’s trademark.
The Complainant has exclusive and prior rights in the GAINSIGHT trademark and the Respondent has no rights or legitimate interests in respect of the Disputed domain names. The Respondent is not known by the GAINSIGHT trademark and has not acquired any rights in the GAINSIGHT trademark that would allow it to use the GAINSIGHT trademark. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademark.
The Complainant contends that the Respondent has registered and is using the Disputed domain names in bad faith. The Respondent had knowledge of the Complainant’s rights in the GAINSIGHT trademark at the time of registration. The Respondent has listed the Disputed domain names for sale in excess of out-of-pocket costs. The Respondent has disrupted the Complainant’s business through display of pornographic content on the Disputed domain names that are confusingly similar to the GAINSIGHT trademark.
For the foregoing reasons, the Complainant requests that the Disputed domain names be transferred from the Respondent to the Complainant.
B. Respondent
The Respondent asserts that it is an interactive domain name holding company managing a portfolio of over 700 domain names.
According to The Respondent, its <gainsight.co> and <gainsight.biz> domain names are completely different from the GAINSIGHT trademark and are not related to the GAINSIGHT trademark. The terms “gain” and “sight” in the disputed domain names are general terms and can be used across industries, products, or services.
The Respondent asserts that the Complainant has no rights or legitimate interests in the disputed domain names. The Respondent has not displayed the GAINSIGHT trademark on the websites at the disputed domain names apart from within the list of domain names that the Respondent owns and is offering for sale.
The Respondent also asserts that it registered and is using the disputed domain names in good faith. Indeed, the Respondent contends that it had no knowledge of the Complainant’s trademark at the time of registration. The Respondent had no intention to sell or transfer any of the disputed domain names for an amount close to that listed on the WHOIS page. The Respondent has the constitutional right of freedom of speech and posting of hardcore pornographic material.
C. Additional Submissions
The Complainant asserts that the Respondent addresses fraudulent statements concerning its representation by counsel in this proceeding. Indeed, the Respondent identified Steven Rinehart as its Legal Representative. However, Steven Rinehart denied being the Respondent’s counsel on this matter. The Respondent’s deceptive behavior with respect to its Response is consistent with its pattern of bad faith registration and use of the disputed domain names.
The Complainant contends that in addition to the fraudulent statement concerning the Respondent’s Legal Representative, the Response is rife with misrepresentations regarding the fact that the disputed domain names are confusingly similar to the GAINSIGHT trademark and that the Respondent had constructive knowledge of the GAINSIGHT trademark when registering the disputed domain names.
The Complainant, a corporation set up under the laws of the United States, is a leading customer relationship management software company.
The Complainant owns, in particular, the following trademark for many goods and services: the U.S. trademark GAINSIGHT No. 4849817 registered on November 10, 2015.
The Complainant also owns the pending Community trademark GAINSIGHT No. 014490049, filed on August 18, 2015.
The disputed domain names <gainsight.co> and <gainsight.biz> were registered on November 13, 2015. At the time the Complaint was filed, the websites at the disputed domain names redirected to pages displaying adult content.
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.
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain names are identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of the following trademark: the U.S. trademark GAINSIGHT No. 4849817 registered on November 10, 2015. The Panel therefore turns to the second part of the inquiry.
It is well-established that a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP.
Here, the disputed domain names incorporate the Complainant’s GAINSIGHT trademark in its entirety without any other word or letter.
Regarding the addition of the gTLD “.biz” to the disputed domain name <gainsight.biz>, and the addition of the ccTLD ‘.co” to the disputed domain name <gainsight.co>, Panels have previously held that the addition of a ccTLD or gTLD does not distinguish a domain from the trademark to which the ccTLD or gTLD is attached. Indeed, even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark”. See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009).
In these circumstances, the Panel finds that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The “Complainant must first make a prima facie case 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”. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s trademark.
The Respondent’s name does not bear any resemblance to the disputed domain names nor is there any basis to conclude that the Respondent is commonly known by the Complainant’s trademark or the disputed domain names. Indeed, WHOIS information associated with the disputed domain names indicates that the Respondent registered these domain names using the name “Daniel Fainman,” which does not bear any resemblance with the Complainant’s trademark.
Furthermore there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods and services.
In the present case the websites at the disputed domain names display pornographic content. Past panels have found that use of a domain name to display pornographic material fails to amount to a bona fide offering or a legitimate noncommercial or fair use. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names in light of the Complainant’s evidence that the Respondent’s intention was to benefit from the Complainant’s trademark reputation to disrupt the Complainant’s business.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Disputed domain names and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
The Respondent listed the disputed domain name <gainsight.co> for sale in excess of out-of-pocket costs. Indeed, WHOIS information associated with the domain name <gainsight.co> displays the message, “<gainsight.co> is for sale! The owner of the domain you are researching has it listed for sale at $42,000.”
Panels have found bad faith where the Respondent listed a domain name for sale in excess of 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).
In addition, the Respondent has disrupted the Complainant’s business through displaying pornographic content on the disputed domain names that are confusingly similar to the GAINSIGHT trademark. Indeed, the websites at the disputed domain names display hardcore pornographic content. Prior panels have held that linking domain names to adult-oriented content is evidence of bad faith. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Finally, in the Panel’s view, the Respondent had necessarily constructive knowledge of the Complainant’s trademark when registering the disputed domain names. Indeed, had the Respondent done a trademark search at the time it registered the disputed domain names, the Respondent would have received notice of the Complainant's pending application for registration.
Noting that the disputed domain names incorporate the particular GAINSIGHT trademark, together with the gTLD “.biz” and the ccTLD “.co”, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, and considering all the facts and evidence submitted by the Complainant, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is ordered that the <gainsight.co> and <gainsight.biz> domain names be transferred from the Respondent to the Complainant.
Nathalie Dreyfus Panelist
Dated: January 6, 2016
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