Isagenix International, LLC v. Domain Administrator / DVLPMNT MARKETING, INC.
Claim Number: FA1706001734412
Complainant is Isagenix International, LLC (“Complainant”), represented by Ryan D. Ricks of SNELL & WILMER L.L.P, Arizona, U.S.A. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isgenix.com>, registered with DNC Holdings, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2017; the Forum received payment on June 2, 2017.
On June 5, 2017, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <isgenix.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 June 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@isgenix.com. Also on June 6, 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 June 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant is a network marketing company that sells its weight management, long-term wellness, and skincare products and has registered the ISAGENIX mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business. Respondent’s <isgenix.com> domain name is confusingly similar to Complainant’s ISAGENIX mark because it incorporates the mark in its entirety and merely deletes a letter and adds a generic top-level domain name (“gTLD"), “.com”.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its ISAGENIX mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name to resolve to a placeholder page hosting paid links. Many of the links on the resolving website redirect to third parties which compete with Complainant.
Respondent has registered and is using the disputed domain name in bad faith. The resolving website for the disputed domain name references Complainant’s website and hosts links to third party websites. Furthermore, Respondent planned to use the disputed domain name to defraud consumers, Complainant’s clients in particular, by misleading them to a website from which Respondent would reap pay-per-click revenue. This is not the first instance that Respondent has registered and used a domain name in bad faith and therefore it is likely that the current domain name was registered and is being used in bad faith. Respondent is merely repeating past illicit behavior by knowingly registering a domain name that capitalizes on infringing Complainant’s rights. Finally, by using a domain name that is a misspelling of Complainant’s mark, Respondent is engaging in typosquatting which alone can support a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <isgenix.com> domain name.
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 asserts that it has established rights in the ISAGENIX mark via its registration with the USPTO. Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established rights in the ISAGENIX mark.
Complainant argues that Respondent’s <isgenix.com> domain name is confusingly similar to Complainant’s ISAGENIX mark because it incorporates the mark in its entirety and merely deletes a letter and adds a gTLD, “.com”. Deleting letters and adding a gTLD is not sufficient to distinguish the domain name from Complainant’s mark. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark in which it has established rights.
Complainant has proved this element.
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 asserts that Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its ISAGENIX mark. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether said respondent is commonly known by the disputed domain name. 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). The WHOIS information on record lists “Domain Administrator” as the registrant name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to a placeholder website hosting paid links to websites of Complainant’s competitors. Using a disputed domain name to resolve to a website hosting links to third party websites, presumably to generate pay-per-click revenue, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name). The disputed domain name resolves to a website that hosts links to third parties, from which Respondent presumably commercially benefits. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant argues that Respondent is using the disputed domain name to misdirect Internet users to its website from which it generates revenue via pay-per-click advertising links. The use of a disputed domain name to misdirect Internet users to a website hosting advertising links is evidence of bad faith registration and use. See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The disputed domain name resolves to a website that hosts advertising links from which Respondent presumably commercially benefits. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
Additionally, Complainant claims that Respondent had actual notice of Complainant’s rights in the ISAGENIX mark and therefore has registered and is using the disputed domain name in bad faith. Actual notice of Complainant’s rights supports a finding of bad faith and can be inferred from a Respondent’s reference to Complainant at its resolving website. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Constructive notice is irrelevant under the Policy. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant attaches a screenshot of a website which it alleges Respondent operates. The website at <www3.isgenix.com> refers to Complainant’s ISAGENIX mark. The Panel finds that Respondent did operate that website and that the clear reference to Complainant’s mark on that website allows an inference of actual notice and finds that Respondent has registered and is using the disputed domain name in bad faith.
Finally, Complainant argues that Respondent is engaged in typosquatting, and therefore, that Respondent has registered and is using the disputed domain name in bad faith. The use of a domain name that is a mere misspelling of a mark, likely to be a typo of an Internet user, is evidence of typosquatting and therefore evidence of bad faith registration and use. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel notes that the disputed domain name <isgenix.com> differs from Complainant’s ISAGENIX mark by omitting an “a”, a typo that an Internet user may be likely to make. Therefore, the Panel finds that Respondent is engaged in typosquatting and that Respondent has registered and is using the disputed domain name in bad faith.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <isgenix.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 5, 2017
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