RetailMeNot, Inc. v. PRIME GROUP
Claim Number: FA1710001754524
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is PRIME GROUP \
(“Respondent”), Location not specified.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is/are <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com>, registered with eNom, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2017; the Forum received payment on October 18, 2017.
On October 20, 2017, eNom, LLC confirmed by e-mail to the Forum that the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 October 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@retailmeot.com, postmaster@rerailmenot.com, and postmaster@retailmenor.com. Also on October 25, 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 November 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant’s business provides online coupons, cashback, and advertising services through its websites and mobile applications since at least as early as 2006. See Compl. Ex. 6c & 10 (evidence of 2006 use from the Internet Archive, archive.org). Complainant had in excess of 650 million total site visits in the past 12 months; has generated $280.4 million in revenue in 2016; and spent $98.2 million in advertising in 2016. See Compl. Ex. 6a-6b. Complainant also registered the RETAILMENOT mark with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 3,935,181, registered Mar. 22, 2011). See Compl., Ex. 8b. Respondent’s <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names are confusingly similar to the RETAILMENOT mark because each disputed domain name contains a typographical error: <retailmeot.com> eliminates the letter “n” from “not;” <rerailmenot.com> replaces the letter “t” with “r” in “retail;” and <retailmenor.com> replaces the letter “t” with “r” in the word “not.”
ii) Respondent has no rights or legitimate interests in the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names. Respondent is not commonly known by any of the disputed domain names. In fact, WHOIS information for the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names identify the same registrant, “PRIME GROUP,” indicating the Respondent is not commonly known by RETAILMENOT or any variation of the mark. See Compl. Ex. 4. Complainant also has not permitted or licensed Respondent to use the mark in any domain name. Furthermore, Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Instead, Respondent’s domain names resolve into the same, customer-specific landing page on a cashback website that directly competes with Complainant’s services. See Compl. Ex. 9.
iii) Respondent registered and used the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names in bad faith. Respondent’s multiple disputed domain names that all incorporate the RETAILMENOT is evidence of a pattern of bad faith registration. See Compl. Ex. 4. Further, Respondent intentionally attempted to attract users, for commercial gain, by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s sits. This was done by registering domain names that are confusingly similar to Complainant’s mark and providing directly competing services. See Compl. Ex. 9. Finally, Respondent’s use of a privacy service to hide its identity of further evidence of bad faith conduct. See Compl. Ex. 4.
B. Respondent
Respondent did not submit a response. The Panel notes Respondent registered the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names on April 6, 2008, July 24, 2011, and July 10, 2010, respectively. See Compl. Ex. 4.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed 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.
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 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 alleges Respondent has no rights or legitimate interests in the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names because Respondent is not commonly known by any of the disputed domain names. In the event a respondent fails to submit a response, panels may look at WHOIS information to determine whether a party lacks rights or legitimate interests in a disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In this case, Complainant provided this Panel with WHOIS information for <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com>, which shows the registrant as “PRIME GROUP.” See Amended Compl., Ex. 4. The Panel notes the Respondent employed a privacy service to hide its identity and Complainant has supplied in its amended annex the subsequent WHOIS information, showing Respondent’s true identity. See Compl., Ex. 4 (original WHOIS demonstrating Respondent’s use of a privacy service). Additionally, there is no further evidence to suggest Respondent is commonly known by any of the disputed domain names or RETAILMENOT or any variation of the mark, and Complainant has not permitted or licensed Respondent to use the mark in any domain name. Therefore, the Panel finds that Respondent is not commonly known by the RETAILMENOT mark, and thus Complainant has satisfied Policy ¶ 4(c)(ii).
Next, Complainant asserts Respondent has no rights or legitimate interests in the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names by failing to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues Respondent’s <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names all redirect users to a third party, competing service, and such diversion fails to confer rights or legitimate interests in the disputed domain names. Redirecting users to a competing third party website is generally not considered to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant contends Respondent’s disputed domain names redirect users to a third party website that offers competing cashback services by providing an excerpt of the third party website. See Compl. Ex. 9. It appears this website makes similar cashback services that directly compete with Complainant’s business. Therefore, the Panel finds that Respondent uses the domain names to directly compete with Complainant, and thus Complainant has satisfied Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant asserts Respondent registered and used the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names in bad faith by registering multiple domain names incorporating Complainant’s RETAILMENOT mark. Multiple registrations that infringe on a trademark can evidence of a pattern of bad faith registration. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). In this case, Respondent <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names all contain typographical variants of the RETAILMENOT mark. Complainant claims this is likely indicative of Respondent’s pattern of bad faith registration for the RETAILMENOT mark. Therefore, the Panel may find Respondent’s multiple registrations of confusingly similar domain names provides evidence of bad faith under Policy ¶ 4(b)(ii).
Next, Complainant contends Respondent intentionally attracted users, for commercial gain, by creating a likelihood as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant argues Respondent’s <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names directly compete with Complainant and Respondent capitalizes from this confusion for a commercial interest. Generally, the use of a disputed domain name that redirects users to a third party site to create a likelihood of confusion and purport to offer competing goods or services demonstrates bad faith registration and use. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Respondent’s domain names redirect users to a third party site that offers competing, cashback services, which Complainant has supplied this panel with an excerpt of that website to evince this use. See Compl. Ex. 9. It appears this site offers competing, cashback services like Complainant’s business. Additionally, Complainant’s employee, Seth Randle, submitted a declaration in support of this contention. See Compl. Ex. 10. Therefore, the Panel finds that Respondent uses the domain names to redirect users to a competing webpage, and thus Complainant has satisfied Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <retailmeot.com>, <rerailmenot.com>, and <retailmenor.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 28, 2017
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