RetailMeNot, Inc. v. Mohsin Aziz / Retail Me Nopes
Claim Number: FA1702001718353
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Mohsin Aziz / Retail Me Nopes (“Respondent”), represented by Marben Luis Tan of ATO LAW, Unspecified Attorney Location.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <retailmenopes.com> and <iretailmenot.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2017; the Forum received payment on February 22, 2017.
On February 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <retailmenopes.com> and <iretailmenot.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@retailmenopes.com, postmaster@iretailmenot.com. Also on February 23, 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.
A timely Response was received and determined to be complete on March 15, 2017.
On March 27, 2017, pursuant to Respondent's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant provides online coupons and advertising services. Complainant uses the RETAILMENOT mark in conjunction with its business practices. Complainant registered the RETAILMENOT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,935,181, registered Oct. 30, 2006). Complainant also registered the RETAILMENOT mark with government agencies in Canada, Australia, United Kingdom, and several countries in Asia.
2. Complainant filed to register the RETAILMENOT with the Government of Pakistan Intellectual Property Organisation, Trade Marks Registry (e.g., App. No. 425317, filed on June, 17, 2016).
3. Respondent’s <retailmenopes.com> and <iretailmenot.com> are confusingly similar to Complainant’s RETAILMENOT mark. [1]The <iretailmenot.com> domain incorporates the RETAILMENOT mark in its entirety, adding the letter “i” and the “.com” generic top level domain (“gTLD”). The <retailmenopes.com> domain incorporates a majority of the RETAILMENOT mark, exchanging the word “not” for “nope,” which are “near-synonyms” of each other. Furthermore, <retailmenopes.com> adds the letter “s” and the “.com” gTLD.
4. Respondent does not have rights or legitimate interests in <retailmenopes.com> and <iretailmenot.com>. Complainant has not authorized Respondent to use the RETAILMENOT mark in any regard, nor is Respondent affiliated with Complainant.
5. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. Respondent’s <retailmenopes.com> resolves to a webpage displaying click-through links to good and services in direct competition with Complainant’s business.
6. Respondent registered and is using <retailmenopes.com> and <iretailmenot.com> in bad faith. The domain name <retailmenopes.com> attracts Internet users to goods and services in direct competition with Complainant for Respondent’s commercial gain. Respondent’s <iretailmenot.com> is an inactive webpage although Respondent, in a blog, has stated his intent to make use of the domain name.
7. Respondent registered two domain names infringing on Complainant’s mark, thereby showing a pattern of bad faith registration.
B. Respondent
1. Respondent is a Pakistani business owner. Respondent is the owner of the <retailmenopes.com> and <iretailmenot.com> domain names. Respondent has been using the domain names in conjunction with his business practices for eleven months prior to the filing of the instant Complaint.[2] Complainant’s use of a trade name is not sufficient to show common law rights in a trademark or that it has acquired a secondary meaning through such use.
2. The domain names are not confusingly similar to Complainant’s RETAILMENOT mark because the lack of similarity between the words “not” and “nopes” makes the domains distinct and unique. Furthermore, the domains are visually dissimilar to Complainant’s mark.
3. Respondent does have rights and legitimate interests in <retailmenopes.com> and <iretailmenot.com>. Respondent exercises a right to freedom of trade and commerce without intent for commercial gain or to divert customers from Complainant’s business. Complainant’s mark is comprised of generic terms commonly used in related online businesses and domain names.
4. Respondent’s domain names are connected to a bona fide offering of goods and services in Respondent’s home country of Pakistan. Respondent lacks “ill will or devious intent” by operating domain names that offer similar goods and services.
5. Respondent did not register and use <retailmenopes.com> and <iretailmenot.com> in bad faith. The domain names do not prevent Complainant from showing its mark in another domain name. Respondent has no intention to attract users to the domain names for commercial gain or to imply an affiliation with Complainant.
6. Respondent registered <retailmenopes.com> and <iretailmenot.com> without constructive or actual knowledge of Complainant and its rights to the RETAILMENOT mark.
Complainant holds trademark rights for the RETAILMENOT mark. Respondent’s domain names are confusingly similar to Complainant’s RETAILMENOT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <retailmenopes.com> and <iretailmenot.com> domain names and that Respondent registered and uses the domain names 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.
Complainant provides online coupons and advertising services. Complainant uses the RETAILMENOT mark in conjunction with its business practices. Complainant registered the RETAILMENOT mark with USPTO (e.g., Reg. No. 3,935,181, registered Oct. 30, 2006). Complainant also registered the RETAILMENOT mark with government agencies in Canada, Australia, United Kingdom, and several countries in Asia. Registrations with USPTO and other government agencies are sufficient to show rights in a mark. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”). Therefore, the Panel concludes that Complainant’s registrations with USPTO and other government agencies are sufficient to show rights in the RETAILMENOT mark.
Complainant contends that Respondent’s <retailmenopes.com> and <iretailmenot.com> are confusingly similar to Complainant’s RETAILMENOT mark. The <iretailmenot.com> domain incorporates the RETAILMENOT mark in its entirety, adding the letter “i” and the “.com” gTLD. “The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).” Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004). “Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.” Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007).
The <retailmenopes.com> domain incorporates a majority of the RETAILMENOT mark, exchanging the word “not” for “nope,” which are “near-synonyms” of each other, maintaining the phonetic similarity between the domain name and the original mark. “Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).” Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Forum July 15, 2004). See also Hotwire, Inc. v. Wilder, FA 741901 (Forum Aug. 7, 2006) (finding the <heatwire.com> domain name to be confusingly similar to the complainant’s HOTWIRE.COM mark, as the disputed domain name was pronounced similarly to the complainant’s mark and was also a misspelled variation of it). Furthermore, <retailmenopes.com> adds the letter “s” and the “.com” gTLD. “[T]he addition of an ‘s’ to the end of the complainant’s mark . . . does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The [disputed domain name] is similar in sound, appearance, and connotation.” Cream Pie Club v. Halford, FA 95235 (Forum Aug. 17, 2000). Thus, the Panel agrees that Respondent’s <retailmenopes.com> and <iretailmenot.com> are confusingly similar to Complainant’s RETAILMENOT mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <retailmenopes.com> and <iretailmenot.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant maintains that Respondent does not have rights or legitimate interests in <retailmenopes.com> and <iretailmenot.com>. Complainant states that it has not authorized Respondent to use the RETAILMENOT mark in any regard, nor is Respondent affiliated with Complainant. Complainant further attests that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. To support this argument, Complainant has shown that Respondent’s <retailmenopes.com> domain name resolves to a webpage displaying click-through links to goods and services in direct competition with Complainant’s business. A respondent’s “use of [a] disputed domain names to feature parked hyperlinks containing links in competition with [c]omplainant’s . . . 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).” McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o., FA1412001594837 (Forum Jan. 22, 2015). Therefore, because “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 holds that “this does not constitute a bona fide offering or a legitimate noncommercial or fair use” under the Policy. Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant maintains that Respondent registered and is using <retailmenopes.com> and <iretailmenot.com> in bad faith. Complainant contends that Respondent registered two domain names infringing on Complainant’s mark, thereby demonstrating a pattern of bad faith registration. A respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013). Likewise, Panels have found that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii). Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000). Therefore, the Panel finds that Complainant has provided evidence that Respondent registered and is using <retailmenopes.com> and <iretailmenot.com> in bad faith under the Policy.
As noted above, Complainant has shown that the <retailmenopes.com> domain name resolves to a website that offers goods and services in direct competition with Complainant, presumably for Respondent’s commercial gain. Where the “[r]espondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which [r]espondent presumably receives referral fees[,]” it has been held that “[s]uch use . . . is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv) because Respondent’s <retailmenopes.com> domain name resolves to a website that contains links to third-party websites that offer services similar to Complainant’s services. AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000).
Next, Complainant has shown that <iretailmenot.com> domain name resolves to an inactive webpage. “Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015). However, Complainant has discovered that Respondent created a blog associated with the <iretailmenot.com> disputed domain name to “expressly declare[ ] its intention to make use of the <iretailmenot.com> domain name.” However, a respondent’s claim of intent to make active use of a domain name under these circumstances is not sufficient to avoid a finding of bad faith registration. See Hewlett-Packard Co. v. Rayne, FA 101465 (Forum Dec. 17, 2001) (finding the respondent’s unsupported claim that a consumer chat website would be forthcoming did not rise to the level of rights or legitimate interests under Policy ¶ 4(a)(ii)).
The Panel finds Complainant has satisfied 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 <retailmenopes.com> and <iretailmenot.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 5, 2017
[1] The <retailmenopes.com> domain name was registered on March 11, 2016. The <iretailmenot.com> domain name was registered on July 13, 2016.
[2] The Response submitted by Respondent does not explain what business Respondent is in.
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