DECISION

 

Traction Corporation v. Ken Zi Wang

Claim Number: FA1709001750913

 

PARTIES

Complainant is Traction Corporation (“Complainant”), represented by Ranjini Acharya of K&L Gates LLP, California, USA.  Respondent is Ken Zi Wang (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gotraction.com>, <tractionconf.com>, <tractionconference.com>, <tractionlabsinc.com>, <tractionlabsmedia.com>, <tractionventure.com>, and <traction.co>, registered with GoDaddy.com, LLC.

 

PANEL

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

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 27, 2017; the Forum received payment on September 27, 2017.

 

On September 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gotraction.com>, <tractionconf.com>, <tractionconference.com>, <tractionlabsinc.com>, <tractionlabsmedia.com>, <tractionventure.com>, and <traction.co> domain names is 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 September 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@gotraction.com, postmaster@tractionconf.com, postmaster@tractionconference.com, postmaster@tractionlabsinc.com, postmaster@tractionlabsmedia.com, postmaster@tractionventure.com, and postmaster@traction.co.  Also on September 29, 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 October 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

PRELIMINARY ISSUE: SINGLE RESPONDENT/MULTIPLE ALIASES

Complainant respectfully submits that although Respondent is listed differently on certain WHOIS registrations, each of the Disputed Domain Names is in fact controlled by the same person.

 

The UDRP Rules, ¶3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. See also Supp. Rules, ¶4(c). Here, each of the Disputed Domain Names is registered with the same domain name registrar, GoDaddy.com, LLC, and the administrative contact and phone number is identical for almost all of the domain names.

 

Additionally, each of the email addresses for almost all of the domain names (other than <traction.co>) uses <buzzstarter.com>. Prior panels have concluded on similar facts that domain names are commonly owned/controlled by a single respondent who is using multiple aliases. See, e.g., Microsoft Corporation v. Microsoft Engineering team Scandinavia/Microsoft Engineering Team Scandinavia AB/Microsoft Engineering Team Turkey/Microsoft Engineering, FA1703001719641 (Forum, April 14, 2017) (finding single respondent where, inter alia, registrar the same, administrative contact was the same name, each of the email addresses for the disputed domain names used <microsoftengineering.com>); United States Postal Service v. Chun Yu Shih / U.S. Protective Service / Daniel Shih / U.S. Protective Service, Inc., FA1612001708702 (Forum, February 6, 2017) (same); NIKE, Inc. and Nike Innovate, C.V. v. xinqian Rhys / Dan Thurston / wenben zhou, FA1701001713345 (Forum, March 6, 2017) (same).

 

With respect to <traction.co>, Respondent has specifically represented to Complainant over the course of prior dealings concerning these domain names that he has the ownership, possession and control of the <traction.co> domain name.  Therefore, there is evidence to support that Respondent is also the owner of the <traction.co> domain name, even though it is currently masked by a privacy service.

 

Further, it is appropriate to assess <traction.co> along with the others in a single complaint. Prior panels have treated “.co” and “.com” domain names together in a single complaint, and treated multiple registrations including some hidden by a privacy services as a single respondent, for the purposes of the UDRP. See, e.g., Alex and Ani, LLC v. LUOLIANG / zhongyan zhu / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Song Xiu Mei, FA1608001689110 (considering <a1exandani.co>, <alex2ani.co>, <alexandanioutlets.co>, <alex4ani.com>, <alexanionlines.com>, <alex2ani.com>, <alexanionline.com>, <alex2ani.club>, and <alexandanis.club> as registered by a single respondent, despite the different gTLDs and the use of a privacy protection service for some domain names; granting transfer).

 

Therefore, Complainant respectfully requests that the Panel treat all of the Disputed Domain Names as commonly owned by Respondent using multiple aliases.

 

              FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).

 

[a.]       The Disputed Domain Names are confusingly similar to Complainant’s TRACTION trademark and Domain Name. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).

 

The Disputed Domain Names are substantially identical or confusingly similar to Complainant’s TRACTION Marks in appearance, sound, connotation, and commercial impression, for several reasons.^[1]

 

First, a domain name that wholly incorporates a federally registered mark is prima facie confusingly similar. See, e.g., Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”). Here, the Disputed Domain Names each incorporates Complainant’s federally registered TRACTION Marks in their entirety and so are prima facie confusingly similar.

 

Second,  addition of the generic terms such as “go,” “conference,” “labs,” “media,” or “venture” does not serve to avoid confusing similarity when used in combination with Complainant’s TRACTION Marks.  Previous panels agree.  See, e.g., Spotify AB v. Haji Pacman, FA 1701001713362 (Forum Feb. 21, 2017) (finding <gospotify.com> confusingly similar to SPOTIFY, and noting that “merely adding the generic word “go” to the beginning of the exact trademark and the g TLD “.com” to the end [] is insufficient to distinguish the disputed domain name from complainant’s trademark.”); Certified Financial Planner Board of Standards, Inc. v. Career Professionals, Inc. FA 0106000097354 (Forum July 12, 2001) (finding <gocfp.com> confusingly similar to CFP because “[t]he addition of “go” and “.com” is likely to be viewed by Internet users as little more than an indicator that the domain name links to a web site related to CFP.”); Time, Inc. v. MIC c/o Domain Management, FA0611000857580 (Forum Jan. 12, 2007) (finding <fortuneconferences.com> confusingly similar to complainant’s FORTUNE mark because “it incorporates complainant’s FORTUNE mark in its entirety and merely adds the generic term ‘conferences,’” and “[s]uch a generic term does not adequately distinguish respondent’s domain name from complainant’s mark…”); Pirelli & C. S.p.A. v. E- commerciale.net c/o Aldo Mangili, FA0703000937098, (Forum April 23, 2007) (finding <pirellilabs.com> confusingly similar to PIRELLI because it incorporated complainants mark in its entirety and added the generic term “labs”); Google Inc. v. Brown Donny c/o donnybrown, FA0902001249402 (Forum April 13, 2009) (finding confusing similarity where the disputed

<googleventure.com> domain name “consists of complainant’s GOOGLE mark followed by the generic term ‘venture’…”).

 

This is particularly true with respect to the addition of the term “media,” which increases the likelihood of confusion as it is an obvious allusion to Complainant’s business. See, e.g., ZeniMax Media Inc. v. Media Technology Ltd., FA1009001348791 (Forum December 20, 2010) (finding <vir2lmedia.com> confusingly similar to VIR2L mark, and citing Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where

<kohlerbaths.com>, the disputed domain name, contained Complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”)).

 

Third, the confusing similarity of the Disputed Domain Names to the TRACTION Marks is evidenced by the instances of actual confusion that have been brought to Complainant’s attention in recent times. 

 

Previous panels have confirmed confusing similarity where a respondent’s use of a domain name has resulted in actual confusion. See, e.g., Yahoo! Inc. v. cancelyahoo.org Private Registrant / A Happy DreamHost Customer, FA 1306001503412 (Forum July 29, 2013) (“The confusion is actual and not hypothetical because complainant has produced examples of actual confusion.”)

 

Thus, the Disputed Domain Names is substantially identical and confusingly similar to Complainant’s TRACTION Marks, and UDRP Policy ¶4(a)(i) is satisfied.

 

 

[b.]       Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).

 

As an initial matter, nothing in the WHOIS contact information suggests that Respondent is commonly known by “Traction”. Rather, the WHOIS information simply lists “Ken Zi Wang” as the registrant of the Disputed Domain Names.  The absence of WHOIS information creates the inference that Respondent is not commonly known by the “Traction” name. See, e.g., Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name because the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).  Further, Complainant has not licensed or otherwise permitted Respondent to use its TRACTION Marks, and has not permitted Respondent to apply for or use any domain name incorporating the trademark.  Taken together, this evinces a lack of rights or legitimate interests in the Disputed Domain Names. See, e.g., Invesco Ltd. v. Premanshu Rana, FA 1705001733167 (Forum July 10, 2017) (finding respondent not commonly known by the <invescoadvisory.com> and <invescotech.com> domain names where complainant had not authorized respondent to use its INVESCO mark and the WHOIS information of record listed “Premanshu Rana” as the registrant of the domain names); ADP, LLC v. Web Visable / Webvisable, Inc., FA 1705001732556 (Forum June 23, 2017) (no rights or legitimate interest where respondent not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).

 

In addition, the manner in which Respondent has used and is currently using the Disputed Domain Names does not constitute a bona fide offering of goods and services, nor is it legitimate noncommercial or fair use, either of which would support a finding of legitimate interests in the Disputed Domain Names. Respondent is using the Disputed Domain Names in a number of different ways, none of which evince a legitimate interest in the Disputed Domain Names.

 

First, the domain names <gotraction.com>, <traction.co> and <tractionlabsmedia.com> resolve to websites that offer digital marketing campaign services that are highly similar to, and directly compete with, the services offered by Complainant in the marketplace.  Such use has continued even after Respondent was specifically made aware of Complainant’s rights in the TRACTION Marks, and of instances of actual confusion arising in the marketplace. The use of the resolving website to compete or conjure a false association with Complainant for commercial gain does not confer rights or legitimate interests in a domain name. See, e.g., American International Group, Inc. v. Reggie Benjamin, FA0703000944242 (Forum May 11, 2007) (finding use of the disputed <aigproperties.com> domain name to promote respondent’s competing real estate services did not give rise to rights or legitimate interests because it “does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); see also Computerized Sec. Sys., Inc. v. Hu, FA157321 (Forum June 23, 2003) (“Respondent’s appropriation of [complainant’s] SAFLOK mark to market products that compete with complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Second, the domain names <tractionconference.com>, <tractionlabs.inc>, <tractionventure.com> and <tractionconf.com> resolve to inactive or parked websites. Such “use” similarly does not confer rights or legitimate interests in a domain name.  Numerous prior panels agree. See, e.g., State Farm Mutual Automobile Insurance Company v. Mclink c/o Marcos Cajiao, FA1404001552103 (Forum May 5, 2014) (where domain name was purportedly parked for free with the domain name registrar, finding no rights or legitimate interests and noting, “[t]here is no legitimate content associated with the disputed domain names and no indication that legitimate content would be forthcoming…A respondent has no rights or legitimate interests in a disputed domain name where the domain name resolves to a website displaying advertisements unrelated to a complainant.”); AMI Entertainment Network, Inc. v. Quentin Ware / Hipgadgets LLC and TapTV, FA1311001531114 (Forum December 30, 2013) (noting that the disputed domain name resolved to a GoDaddy website stating “Welcome to <taptv.net>. This Web page is parked FREE, courtesy of GoDaddy.com.” and concluding that “Respondent’s use of the disputed domain name to host a parking page is not a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.”) State Farm Mutual Automobile Insurance Company v. Ernie Blood/Harmonmediagroup, FA1707001738729 (Forum August 1, 2017) (where disputed domain name resolved to an inactive website, finding that “[t]he domain name’s inactivity indicates neither a bona fide offering of goods or services … nor a legitimate noncommercial or fair use of such domain name…”); Hewlett-Packard Co. v. Shemesh, FA434145 (Forum April 20, 2005) (same).

 

Based on the foregoing, it is clear that Respondent lacks any rights or legitimate interests in the Disputed Domain Names.

 

[c.]       The Disputed Domain Names were registered and are being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).

 

The earliest of the Disputed Domain Names were registered in 2010 (<traction.co>), 2013 (<tractionconference.com> and <tractionventure.com>) and 2014 (<gotraction.com> and <tractionconf.com>).   This was well after Complainant first began using its TRACTION Marks in connection with its services in 2001, including via its website <tractionco.com>.

 

It is more probable than not that Respondent did have actual knowledge of Complainant’s TRACTION Marks at the time that the Disputed Domain Names was first acquired by Respondent, and that it subsequently used the opportunity to promote competing services through the website resolving to the Disputed Domain Names.^[2]   Numerous prior panels have found bad faith in similar circumstances.  See e.g., Universal Protein Supplements Corporation d/b/a Universal Nutrition v. New Ventures Services, FA 1208001458721 (Forum October 23, 2012) (“Respondent almost certainly had actual knowledge of Complainant’s mark because respondent registered a domain  nearly identical to complainant’s mark and respondent provides links to third-party websites that sell goods competing with complainant’s goods through its website.”); Bank of America, National Association v. Marcos Alexis Nelson, FA1505001621654 (Forum July 2, 2015) (findings that Respondent had registered and used the disputed domain name in bad faith according where it used the domain name to promote its business in real estate and financial services, which were services that competed with the services Complainant offered); see also, Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith.”).

 

Further, even the most cursory investigation by Respondent would have revealed Complainant’s rights in the TRACTION Marks for online advertising and marketing services, which had been in use for many years. In these circumstances, even if respondent could claim that it did not have actual knowledge – which it cannot plausibly do – respondent had a duty to investigate prior to registering its domain name. See Collegetown Relocation, L.L.C. v. John Mamminga, FA 95003 (Forum July 20, 2000) (“When registering domain names, Respondent has a duty to investigate and refrain from using a domain name that infringes on a third party’s rights.”). The fact that Respondent proceeded to register the Disputed Domain Names suggests registration in bad faith. See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about Complainant’s mark when it registered the subject domain name.”)

 

Further, the use of a privacy service with respect to <traction.co> is additional evidence of bad faith registration. See, e.g., ADP, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA1708001744730 (Forum September 20, 2017) (“the Panel concludes that respondent’s use of privacy services are further indications of bad faith in the present case.”); Capital One Financial Corp. v. Vincent Johnson, FA1708001742883 (Forum August 28, 2017) (“Respondent's use of a privacy service in an apparent attempt to conceal his identity, while not dispositive, lends further support to the inference of bad faith intent.”)

 

In 2014, Complainant’s prior counsel contacted Respondent to share Complainant’s concerns regarding Respondent’s registration and use of at least <gotraction.com>.  At that time, Respondent provided Complainant with assurances that its future use of TRACTION would not infringe on Complainant’s rights. Specifically, Respondent provided assurances that he would move away from any infringing use and would begin to use his then- existing domain names in a way that would not give rise to a likelihood of confusion.  Based on those assurances, Complainant chose not to take any further action.

 

Unbeknownst to Complainant, Respondent subsequently knowingly registered several more TRACTION-formative domain names (<tractionlabsinc.com> and <tractionlabsmedia.com>). There can be no doubt that, by the time these domain names were registered, Respondent had actual notice of Complainant’s rights in the TRACTION Marks. Worse still, these domain names were registered and used after Respondent had specifically represented to Complainant that Respondent would cease his infringing conduct with respect to Complainant’s TRACTION Marks. Complainant has subsequently learned that Respondent has been using several of the Disputed Domain Names to advertise confusingly similar digital marketing campaign services on competing websites resolving to at least <gotraction.com> and <tractionlabsmedia.com>. In light of the history of correspondence between the parties, there can be no doubt that this use is in bad faith. A recent prior panel decision supports this conclusion. See, Discover Financial Services v massimo barone, FA 1708001744205 (Forum September 8, 2017) (finding that the “[u]se of a domain name containing a complainant’s mark to resolve to a competing website evinces a finding of bad faith,” and that by using a website to display services similar to complainant, respondent “intentionally attracts Internet users looking for complainant to a competitive website for respondent’s commercial gain. This constitutes bad faith.”) The same is true here.

 

Respondent’s unauthorized and infringing use has led to numerous instances of actual customer confusion in the marketplace. Respondent has been made aware of these actual instances of confusion. However, Respondent has refused to address this actual confusion in any way. Respondent’s inaction in the face of actual confusion further evinces Respondent’s bad faith. The decisions of several recent panels supports this conclusion. See, e.g., Steve Wainshtok dba Magic Locksmith v. Magic Locksmith, FA 1701001711129 (Forum Feb. 16, 2017) (finding bad faith where disputed domain name “create[d] actual confusion with customers in search of complainant’s business,” because “[c]ustomers believe they are receiving services from complainant, when they are receiving respondent’s services, which has been negatively impacting the good will of the MAGIC LOCKSMITH mark.”); Beach Trading Co. Inc. v. Luis Alfonso Jaramillo Lenis, FA 1705001731678 (Forum July 6, 2017) (finding respondent’s behavior in attempting to cause actual confusion was for commercial gain, and therefore finding bad faith).

 

Between May 2017 and September 2017, Complainant and Complainant’s counsel attempted to negotiate the transfer of several of the Disputed Domain Names, including <gotraction.com>, <traction.co>, and <tractionconference.com> as well as an undisclosed number of additional TRACTION-formative domain names that Respondent purported to possess.  Respondent went so far as to agree to undertake a transfer for the sum of $3,000, provided that Respondent be permitted to gradually phase out his use of the domain names over a fixed period of time.^[3] The parties even drafted a written contract reflecting their agreement.  When it came time to signing the agreement, however, Respondent reneged. Instead, Respondent demanded $3,000 for the <traction.co> domain name alone, which Respondent purported to possess, and refused to transfer any of the other domain names to Complainant.  Respondent indicated that he was looking to sell other TRACTION-formative domain names to third parties for even greater sums of money.  

 

These eleventh hour demands, coupled with a history of refusal to respond and disregard for previously-agreed terms, leaves no room for doubt that Respondent has acted entirely in bad faith.  The approach of prior panels supports this conclusion. See, e.g., Yahoo! Inc. v. David Blanco, FA0908001280452 (Forum October 14, 2009) (finding bad faith where respondent “knew that the YAHOO! mark was of value to its rightful owner,” and made diversionary use of the disputed <yahoo.tel> domain name with a profit motive to “ensnare Internet users searching for complainant’s services,” and in part because respondent sough to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his documented out- of-pocket expenses.”)

 

Based on the foregoing, it is clear that each of the Disputed Domain Names were undoubtedly registered and are being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:

 

(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.

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” 

 

The disputed domain names are all registered with the same domain name registrar, GoDaddy.com, LLC.  The administrative contact and phone number is identical for almost all of the domain names.  Each of the email addresses for the domain names (other than the <traction.co> domain name) uses <buzzstarter.com>. With respect to the <traction.co> domain name, Respondent has specifically represented to Complainant over the course of prior dealings concerning these domain names that he owns and controls the <traction.co> domain name.

 

Identical and/or Confusingly Similar

Complainant registered the TRACTION mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,236,011, registered Nov. 6, 2012). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i).  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).”). Complainant has established its rights in the TRACTION mark.

 

Complainant claims Respondent’s disputed domain names are identical or confusingly similar to Complainant’s mark because they contain Complainant’s mark in its entirety and add various generic terms such as “go,” “conference,” “labs,” “media,” or “venture” along with a gTLD. Adding similar generic descriptive words to a domain name does not sufficiently distinguish it from a registered mark for the purposes of Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.  See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The disputed domain names are either identical, as is the case with the <traction.co> domain name, or confusingly similar, for the other six domain names, to the TRACTION mark under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to 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 claims Respondent has no rights or legitimate interests in the disputed domain names.  Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name.  See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that 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 Respondent was commonly known by the domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark). The WHOIS identifies “Ken Zi Wang” as the registrant on all domain names except <traction.co>.  No evidence exists to show Respondent has ever been legitimately known by the TRACTION mark (the organization name is blank). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant and Complainant has not given Respondent permission to use the disputed domain name. The Panel must conclude Respondent is not commonly known by any of the domain names under Policy ¶4(c)(ii).

 

Complainant claims Respondent uses the domain names <gotraction.com>, <traction.co> and <tractionlabsmedia.com> resolve to websites that offer digital marketing campaign services very similar to (and directly compete with) Complainant’s services. The web sites do nothing to distinguish themselves from Complainant.  Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to make a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Respondent uses the <gotraction.com>, <traction.co> and <tractionlabsmedia.com> domain names to compete with Complainant, which does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).

 

Complainant claims the domain names <tractionconference.com>, <tractionlabs.inc>, <tractionventure.com> and <tractionconf.com> resolve to inactive or parked websites. Holding a confusingly similar domain name inactively or using it to offer links to third-party services does not constitute a making of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy  ¶4(c)(iii).”). Respondent inactively holds these four domain names, (or they host parked webpages), which fails to constitute make a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).

 

Respondent has acquired no rights to the <traction.co> domain name because Respondent registered the domain name using a WHOIS privacy service.  Respondent has done nothing to publicly associate itself with the <traction.co> domain name, which prevents Respondent from acquiring any rights to it.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Respondent offered to sell the disputed domain names to Complainant when Complainant contacted Respondent regarding the <gotraction.com> domain name. Offering a confusingly similar domain name for sale in excess of out-of-pocket costs is evidence of bad faith registration and use. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶4(b)(i).”). Respondent offered to sell the disputed domain names directly to Complainant for $3,000, to which Complainant agreed.  Respondent said “Yeah agreed to it.  And will send back docs.”  While it may have been begrudging, it was an acceptance.  Then Respondent reneged on the offer and instead stated he would only sell the <traction.co> domain name for $3,000 because he was having “cash flow” issues. Respondent’s offering of the domain names for sale directly to Complainant in excess of his out-of-pocket costs is evidence of bad faith registration and use.

 

Complainant claims Respondent registered and uses the disputed domain names in bad faith by creating numerous instances of actual customer confusion in the marketplace. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain is sufficient evidence of bad faith under Policy ¶4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."). Respondent’s confusingly similar domain names, coupled with the competing use on three of the resolving webpages, creates confusion in users seeking Complainant and its services. Respondent attempted to confuse users and benefit off Complainant’s mark in bad faith under Policy ¶4(b)(iv), which constitutes bad faith.

 

Complainant claims Respondent had actual knowledge of Complainant’s TRACTION mark. Actual knowledge is evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent had actual knowledge of Complainant’s rights in the TRACTION mark because Complainant had been using its mark in commerce for numerous years; Respondent offered competing services on some of the resolving webpages; and Respondent registered more domain names after Complainant first contacted Respondent about the use of the <gotraction.com> domain name. The Panel must conclude Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).

 

Respondent registered the <traction.co> domain name using a WHOIS privacy service.  In the commercial context, this raises the rebuttable presumption of bad faith registration and use of the disputed domain name.  Respondent has done nothing to rebut that presumption.  This Panel is willing to find bath faith registration and use on this basis alone for the <traction.co> domain name.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

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

 

Accordingly, it is Ordered the <gotraction.com>, <tractionconf.com>, <tractionconference.com>, <tractionlabsinc.com>, <tractionlabsmedia.com>, <tractionventure.com>, and <traction.co> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, October 23, 2017