Paperless Inc. v. Ics Inc c/o ICS Inc
Claim Number: FA1605001673997
Complainant is Paperless Inc. (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, London, United Kingdom. Respondent is Ics Inc c/o ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <papperlesspost.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2016; the Forum received payment on May 9, 2016.
On May 9, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <papperlesspost.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 May 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2016 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@papperlesspost.com. Also on May 11, 2016, 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 June 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 provides online and printed stationary, including greetings, invitations, birth announcements, wedding suites and custom stationery from its website <www.paperlesspost.com>.
Complainant’s website allows Internet users to create their own online or paper stationery via customizable designs offered under the PAPERLESS POST mark.
Complainant holds a registration for the PAPERLESS POST service mark, which is on file with the United States Patent and Trademark Office (“USPTO”), as Registry No. 3,730,236, registered December 22, 2009.
Respondent registered the domain name <papperlesspost.com> on or about December 8, 2011.
The domain name is confusingly similar to Complainant’s PAPERLESS POST service mark.
Respondent has not been commonly known by the domain name.
Respondent is not and never has been licensed or otherwise authorized to use Complainant’s PAPERLESS POST mark.
Respondent uses the domain name to redirect unsuspecting Internet users to a website featuring pay-per-click links to third-party websites which compete with Complainant’s business.
Respondent’s use of the domain name is done for its commercial gain.
This use constitutes neither a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent is a serial cyber-squatter with prior UDRP case decisions against it.
Respondent’s use of the domain name disrupts Complainant’s business.
The domain name is an instance of typo-squatting.
Respondent was aware of Complainant’s rights in the PAPERLESS POST mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the PAPERLESS POST service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Cayman Islands). See Advance Auto Parts, Inc. v. Privacy Ltd. Disclosed Agent, FA 1625582 (Forum July 23, 2015) (finding that a UDRP Complainant’s USPTO registration was sufficient under Policy ¶ 4(a)(i), notwithstanding that the respondent there resided in the Isle of Man).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <papperlesspost.com> domain name is confusingly similar to Complainant’s PAPERLESS POST service mark. The domain name contains the mark in its entirety, save only for the elimination of the space between the terms of the mark and the addition of a third letter “p” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of the mark of another and the addition of a gTLD in creating a domain name do not establish distinctiveness from that mark under Policy ¶ 4(a)(i)); see also Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a UDRP complainant's BELKIN mark because the name merely replaced the letter “i” in that mark with the letter “e”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which is cognizable under the Policy.
We begin by noting that Complainant contends, and that Respondent does not deny, that Respondent has not been commonly known by the disputed domain name <papperlesspost.com>, and that Respondent is not and never has been licensed or otherwise authorized to use Complainant’s PAPERLESS POST mark.
Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Ics Inc c/o ICS Inc,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, the panel decision in CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015):
The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <papperlesspost.com> domain name to attempt to profit by employing the domain name to redirect unsuspecting Internet users to a website featuring pay-per-click links to third-party websites which compete with Complainant’s business. This use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin, FA1506001626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
In addition, it is plain that the <papperlesspost.com> domain name is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in an attempt to take advantage of common spelling errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting is itself a demonstration of a lack of rights to or legitimate interests in a contested domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had “engaged in typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <papperlesspost.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. by diverting Internet users to competitors of Complainant. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015):
The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <papperlesspost.com> domain name, which is confusingly similar to Complainant’s PAPERLESS POST mark, is an attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring pay-per-click links to third-party websites that offered services similar to those of a UDRP complainant).
Moreover, as already noted, it is evident that the <papperlesspost.com> domain name is an instance of typo-squatting, which is further evidence of Respondent’s bad faith in registering and using the domain name. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that a respondent’s <unerarmour.com> domain name constituted typo-squatting of a UDRP complainant’s UNDER ARMOUR mark, which constituted evidence of bad faith under Policy ¶ 4(a)(iii)).
Finally, under this head of the Policy, it is clear from the record that Respondent knew of Complainant and its rights in the PAPERLESS POST mark when it registered the <papperlesspost.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (finding that, while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that a respondent had actual knowledge of a UDRP complainant's mark when it registered a confusingly similar domain name, a panel can find bad faith registration); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith in the registration of a disputed domain name where a respondent was "well-aware of the complainant's … mark at the time of registration").
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <papperlesspost.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 6, 2016
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