Paperless Inc. v. ICS Inc / Ics Inc
Claim Number: FA1611001704638
Complainant is Paperless Inc. (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, London, United Kingdom. Respondent is ICS Inc / Ics Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paperlessport.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 known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2016; the Forum received payment on November 28, 2016.
On November 28, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <paperlessport.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 December 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@paperlessport.com. Also on December 1, 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 December 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Paperless, Inc., is a provider of online and printed stationary. In connection with this business, Complainant runs a website where users can create and customize online and paper stationery. Complainant has rights in the PAPERLESS POST mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,730,236, registered Dec. 22, 2009). Respondent’s <paperlessport.com> is confusingly similar to Complainant’s PAPERLESS POST mark, as it contains the mark in its entirety, merely omitting the space in the mark, replacing the final “s” for an “r,” and appending the generic top-level domain name (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <paperlessport.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the PAPERLESS POST mark for any reason. Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent’s registration and use of the disputed domain is in bad faith under the Policy. Respondent registered the domain name for the purpose of reselling it, and is a well-known serial squatter, evidence of bad faith under Policy ¶¶ 4(b)(i) & (ii). Respondent has also intentionally attempted to confuse, attract, and profit from Internet users searching for Complainant’s business. Respondent also had Complainant and its business in mind when it registered the domain, evidence that Respondent had actual or constructive knowledge of Complainant’s rights in the PAPERLESS POST mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was created on May 16, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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:
(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(f), 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 (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 claims rights in the PAPERLESS POST mark based upon registration of the mark with the USPTO (e.g., Reg. No. 3,730,236, registered Dec. 22, 2009). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel may therefore hold that Complainant’s registration of the PAPERLESS POST mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <paperlessport.com> is confusingly similar to Complainant’s PAPERLESS POST mark, as the domain contains the mark in its entirety, merely omitting the space, replacing the final “s” with an “r,” and appending the gTLD “.com.” Omitting a space in a mark does not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis. 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Likewise, switching one letter for another and appending a gTLD does not distinguish a domain name from a complainant’s mark. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds 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.”). Accordingly, the Panel finds Respondent’s <paperlessport.com> is confusingly similar to Complainant’s PAPERLESS POST mark pursuant to Policy ¶ 4(a)(i).
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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 <paperlessport.com> as it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PAPERLESS POST mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record currently identifies Respondent as “ICS Inc.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <paperlessport.com> redirects to a landing page comprising a directory of affiliate links to Complainant’s competitors. Use of a domain name to resolve to a website hosting competing links amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent’s use of <paperlessport.com> is evidence of their lack of rights or legitimate interests in the disputed domain name and failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use.
Complainant claims that Respondent registered the domain with the primary intention of selling the domain to Complainant. Offers of sale of a domain name can be evidence of bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Respondent’s <paperlessport.com> resolves to a website that has a notice which states the domain is for sale for the amount of $2,959.00, and links to a page with purchase details. Complainant claims Respondent has directed this offer to Complainant, because Respondent is aware of the costs of recovering an infringing domain name; and there is no conceivable reason to offer to sell a domain name with a typographical error to the general public. The Panel finds evidence of such an offer to indicate bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also contends Respondent is a well-known serial squatter and that Respondent’s registration of <paperlessport.com> is part of a pattern of bad faith registration. A showing of a history of bad faith registration can itself be evidence of bad faith under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).” Complainant points to a sample list of decisions decided against Respondent submitted as Annex. See, e.g., Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015); Paperless Inc. v. Ics Inc c/o ICS Inc, FA 1673997 (Forum June 6, 2016). The Panel agrees that Respondent’s history of adverse UDRP findings is evidence of their bad faith in this case under Policy ¶ 4(b)(ii).
Complainant also claims the website at <paperlessport.com> is a scheme adopted by Respondent to confuse, attract, and profit from Internet users searching for Complainant’s business. Bad faith has been found when a respondent is using a disputed domain name to resolve to a website which links to services competing with the complainant. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel recalls that Respondent’s <paperlessport.com> redirects to a landing page comprising a directory of affiliate links to Complainant’s competitors. The Panel agrees that Respondent’s registration and use of the website shows bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the PAPERLESS POST mark. Complainant argues that the deliberate misspelling of Complainant’s mark, Respondent’s history of targeting Complainant, and the fame and notoriety of Complainant’s mark all indicate that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers from Respondent's manner of use of the disputed domain name and the notoriety of the Complainant's mark that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paperlessport.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: January 9, 2017
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