T-Mobile USA, Inc. dba MetroPCS v. Milen Radumilo
Claim Number: FA1701001714313
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mdtropcs.com>, registered with Domain.com, LLC.
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 January 26, 2017; the Forum received payment January 26, 2017.
On Jan 26, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <mdtropcs.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC verified that Respondent is bound by the Domain.com, LLC 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 January 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2017, 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@mdtropcs.com. Also on January 27, 2017, 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 March 3, 2017. 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 registered the METROPCS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,784,778, registered Nov. 18, 2003). See Compl., at Attached Ex. C. Respondent’s <mdtropcs.com> mark is confusingly similar as it fully incorporates the METROPCS mark and only differs by substituting the letter “d” for the letter “e” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <mdtropcs.com>. No evidence suggests that Respondent, listed in the WHOIS information, is commonly known by the METROPCS mark. Complainant did not license or otherwise permit Respondent to use Complainant’s marks or use a domain name with the marks. The domain name has the headline: “Congratulations T-Mobile Visitor!” and offers users the opportunity to take a survey and win $50. See Compl. at Ex. D. After taking the survey, links pop up for third party websites for unrelated services, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Finally, Respondent offers the domain name for sale for $788 to the public.
Respondent registered and is using <mdtropcs.com> in bad faith. Respondent attempts to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark. Furthermore, Respondent engaged in the practice of typosquatting with the intent to divert Internet users for commercial gain. Additionally, Respondent’s offer to sell the disputed domain for $788 is further evidence of bad faith. See Compl. at Ex. E. Respondent also previously acted in bad faith and has numerous adverse UDRP decisions. Respondent must have had actual knowledge of Complainant’s marks, as the disputed domain name specifically mentions Complainant and it is apparent that Respondent is familiar with Complainant’s business.
B. Respondent
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent registered <mdtropcs.com> June 26, 2016.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name, but for the change of a single letter.
Respondent has not shown rights or legitimate interests in the disputed domain name or Complainant’s protected mark contained in its entirety within the domain name but for the change of a single letter.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and uses 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(f), 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 (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 national provider of mobile communications services. Complainant currently serves approximately 67.4 million wireless subscribers through approximately 80,000 total points of distribution using the brands “T-Mobile” and “MetroPCS”. Complainant shows that it registered the METROPCS mark with the USPTO (e.g., Reg. No. 2,784,778, registered Nov. 18, 2003). See Compl., at Attached Ex. C. Registration of a mark with the USPTO establishes a registrant’s rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Complainant established rights in the METROPCS mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <mdtropcs.com> is confusingly similar as it only differs by the substitution of one letter the addition of the gTLD “.com”. Substituting one letter for another has not been found distinguishing. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Similarly, adding the gTLD “.com” does not constitute a sufficient difference. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent changed the METROPCS mark by substituting the “e” for the letter “d” and added the gTLD “.com”. Therefore, the Panel agrees that Respondent has not included elements in the domain name that would provide sufficient distinction from 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 confusingly similar domain name including Complainant’s protected mark in its entirety but for a change of one letter and addition of the gTLD.com; 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 (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 contends that Respondent has no rights or legitimate interests in <mdtropcs.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Milen Radumilo” as the registrant. See Compl., at Attached Ex. A. Complainant asserts that no evidence suggests that Respondent has ever been legitimately known by the METROPCS mark. Such assertions have been used as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the METROPCS mark. Accordingly, the Panel agrees; Respondent is not commonly known by <mdtropcs.com> under Policy ¶ 4(c)(ii).
Complainant next argues that the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use because the landing page offers compensation to users for completing a survey. Similar uses of disputed domain names have been used by Panels to evidence a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant alleges that the disputed domain name uses the headline: “Congratulations T-Mobile Visitor!” and offers users the opportunity to take a survey and win $50. See Compl. at Ex. D. After taking the survey, links pop up for third party websites for unrelated services. The Panel agrees; the disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant lastly argues that Respondent’s use of the <mdtropcs.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent offers the domain name for public sale. Offering a domain name for sale has been found to not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant offers that Respondent lists the disputed domain name for sale for $788 on the WHOIS record for Respondent. See Compl. at Attached Ex. A, E. Accordingly, the Panel agrees with Complainant’s assertions.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name that contains in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent registered and is using <mdtropcs.com> in bad faith by attempting to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark. Such behavior supports findings of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant claims that Respondent predominantly places Complainant’s marks on the disputed domain name and offers a survey purportedly in connection with Complainant’s services in an attempt to commercially benefit. See Compl. at Attached Ex. D. The Panel finds that Respondent attempted to commercially benefit in bad faith.
Complainant next contends that Respondent engages in typosquatting behavior by changing one letter with an adjacent letter. A finding of typosquatting supports fiindings of bad faith. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant states that Respondent attempts to commercially benefit from a common typing mistake made by prospective users, changing the “e” to “d” in its METROPCS mark. Thus, the Panel finds that Respondent’s typosquatting supports findings of bad faith.
Further, Complainant claims that Respondent listed the disputed domain name for sale to the public. Offering a website for sale for an amount in excess of expected registration costs has been held to be evidence of bad faith. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant states that Respondent offers to sell the disputed domain name to the general public for $788.00 through its WHOIS information. See Compl. at Attached Ex. A, E. Accordingly, the Panel agrees with Complainant that such conduct supports findings of bad faith.
Complainant next alleges that Respondent takes advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and disrupt Complainant’s business. Using a domain name to offer hyperlinks resolving in websites in direct competition with complainant’s services has been used as evidence of disrupting businesses. 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).”). Complainant claims that Respondent here attempts to benefit from Complainant’s well-known mark in order to disrupt its business. The Panel may agree with Complainant.
Complainant next alleges that Respondent previously has been found to have acted in bad faith in numerous adverse UDRP decisions. Evidence of serial cybersquatting can demonstrate bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant offers that Respondent has been a respondent in numerous other UDRP proceedings, including against Energizer Brands, Michelin North America, and The Toronto-Dominion bank, among others. See Compl. at p. 8. The Panel agrees that Respondent’s previous similar behavior evidences bad faith in the present proceeding.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel however agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge as shown by the landing page for the disputed domain name, which specifically mentions Complainant. Further, the Panel finds it to be apparent that Respondent is familiar with Complainant’s business services. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s rights in its mark and registered and used the <mdtropcs.com> domain in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mdtropcs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 13, 2017
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