DECISION

 

The Endurance International Group, Inc. and its subsidiary company Hostgator.com, LLC v. Dealwave

Claim Number: FA1706001738163

 

PARTIES

Complainant is The Endurance International Group, Inc. and its subsidiary company Hostgator.com, LLC (“Complainant”), represented by CitizenHawk, Inc., California, U.S.A.  Respondent is Dealwave (“Respondent”), Maryland, U.S.A.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, <hstgator.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 30, 2017; the Forum received payment on June 30, 2017.

 

On July 3, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, <hstgator.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names.  Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@hostator.com, postmaster@hostgaor.com, postmaster@hostgato.com, postmaster@hostgatr.com, postmaster@hostgtor.com, and postmaster@hstgator.com.  Also on July 11, 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 August 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant uses the HOSTGATOR mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,193,860, registered Jan. 2, 2007), in furtherance of its domain name searching services and Internet design services. See Compl., at Attached Ex. E. Respondent’s <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, and <hstgator.com> domain names are confusingly similar to Complainant’s HOSTGATOR mark because each domain name incorporates the mark in its entirety and merely adds extra characters, removes characters, misspells the mark in other ways, and adds a generic top-level domain name (“gTLD”), “.com”.

2.    Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain names nor has Complainant authorized Respondent to use its HOSTGATOR mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate or noncommercial fair use. Instead, Respondent is using the disputed domain name to redirect to Complainant’s website in violation of Complainant’s affiliate program. See Compl., at Attached Ex. H (screenshots of resolving websites); Compl., at Attached Ex. M (copy of affiliate agreement).

3.    Respondent has registered, and is using, the disputed domain name in bad faith. Respondent is using some, or all, of the disputed domain names to redirect Internet users to Complainant’s own website. Furthermore, Respondent is a member of Complainant’s affiliate program and violated that agreement by registering the disputed domain name. Respondent also clearly had actual knowledge of Complainant’s rights in the HOSTGATOR mark. Finally, Respondent is engaging in typosquatting and a pattern of bad faith registration.

 

B.   Respondent:

1.    Respondent submits no contentions in this proceeding.

 

FINDINGS

1.    Respondent’s <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, <hstgator.com> domain names are confusingly similar to Complainant’s HOSTGATOR mark.

2.    Respondent does not have any rights or legitimate interests in the <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, <hstgator.com> domain names.

3.    Respondent registered or used the <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, <hstgator.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a  trademark. Complainant claims to have registered the HOSTGATOR mark as early as 2007 (Reg. No. 3,193,860, registered Jan. 2, 2007), which it contends demonstrates its longstanding rights in the mark. See Compl., at Attached Ex. E. Registration of a mark with the USPTO and other entities sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in or to the HOSTGATOR mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, and <hstgator.com> domain names are confusingly similar to Complainant’s HOSTGATOR mark because each domain name incorporates the mark in its entirety and merely adds extra characters, removes characters, misspells the mark in other ways, and adds

“.com”. Changing letters in a mark to create simple typos is not enough to distinguish a mark from a domain name. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark.  In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Additionally, a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s HOSTGATOR mark in which Complainant has rights.

 

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 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 the disputed domain names as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the HOSTGATOR mark, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel sees that the WHOIS information concerning the disputed domain names identifies

“Dealwave” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. As such, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the disputed domain names pursuant to Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent is using the disputed domain name to redirect to Complainant’s website in violation of Complainant’s affiliate program. Redirecting Internet users with a domain name in breach of an affiliation agreement precludes a finding of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant attaches screenshots showing that each disputed domain name resolves to Complainant’s website. See Compl., at Attached Ex. H. Complainant also produces the affiliate program agreement, section 1(d)(iii) of which Respondent has allegedly breached. See Compl., at Attached Ex. M. Therefore, the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith

            Complainant alleges that Respondent has engaged in a pattern of bad faith registration and therefore the Panel concludes that the current domain names in dispute have been registered, and are being used, in bad faith. Registration of multiple domain names in dispute within a single proceeding can support a finding of bad faith. See Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the  <radissonbluplazachongqing.com>,

             <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and 

            <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Also, past UDRP decisions that resulted in a transfer from the respondent of the current proceeding to another complainant is indicative of bad faith. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant attaches screenshots of past UDRP disputes involving “Dealwave” in which “Dealwave” was required to transfer its domain name to complainant. See Compl., at Attached Ex. N. Therefore, the Panel finds that Respondent has registered, and is using, the disputed domain names in bad faith.

 

            In analyzing bad faith, the Panel also looks beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant alleges that Respondent violated its affiliate program by infringing Complainant’s trademark rights. Violation of an affiliate program is grounds on which to find bad faith. See LifeLock v. Sparta Trading S.A., FA1408001577367 (Forum Oct. 14, 2014) (“Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, which is a violation of its affiliate agreement with Complainant.  Therefore, Respondent is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”).

 

            Next, Complainant argues that Respondent had actual knowledge of Complainant’s rights at the time it registered the disputed domain names. The fact that Respondent uses the disputed domain names to resolve to Complainant’s website may allow the inference that Respondent had actual knowledge of Complainant’s rights and therefore that Respondent registered the disputed domain names in bad faith. 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)). Complainant attaches screenshots showing that each disputed domain name resolves to Complainant’s website. See Compl., at Attached Ex. H. Therefore, the Panel finds that Respondent registered, and is using, the disputed domain name in bad faith.

 

            Additionally, Complainant asks the Panel to find bad faith on the grounds that Respondent is using the disputed domain names to resolve to Complainant’s website. Using a disputed domain name to redirect to Complainant’s website is evidence of bad faith. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant attaches screenshots showing that each disputed domain name resolves to Complainant’s website. See Compl., at Attached Ex. H. Therefore, the Panel finds that Respondent registered, and is using, the disputed domain name in bad faith.

 

Finally, Complainant urges the Panel to find bad faith on the grounds that Respondent is engaging in typosquatting. When a disputed domain name differs from a mark because of a simple and likely typo, the Panel infers that Respondent is typosquatting and thereby find bad faith. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Therefore, since the disputed domain names differ from Complainant’s mark only because of simple typos, the Panel finds that Respondent has registered, and is using, the disputed domain names in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hostator.com>, <hostgaor.com>, <hostgato.com>, <hostgatr.com>, <hostgtor.com>, <hstgator.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  August 14, 2017