T-Mobile USA, Inc. dba MetroPCS v. Domain Administrator / Eastern Valley Limited
Claim Number: FA1710001754966
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Domain Administrator / Eastern Valley Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <edgemetropcs.com>, <metropcsbates.com>, <metropcsebates.com>, <metropcsedge.com>, <metropcsgalaxy8offer.com>, <metropcs-mmsmsbno.com>, <metropcsmvno.com>, <metropcsrabates.com>, <metropcsrbates.com>, <metropcsrebares.com>, <metropcsrebated.com>, <metropcsrebats.com>, <metropcsrebtes.com>, <metropcsrevates.com>, and <metropcstebates.com>, registered with Interweb Advertising D.B.A. Profile Builder.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2017; the Forum received payment on October 20, 2017.
On October 27, 2017, Interweb Advertising D.B.A. Profile Builder confirmed by e-mail to the Forum that the <edgemetropcs.com>, <metropcsbates.com>, <metropcsebates.com>, <metropcsedge.com>, <metropcsgalaxy8offer.com>, <metropcs-mmsmsbno.com>, <metropcsmvno.com>, <metropcsrabates.com>, <metropcsrbates.com>, <metropcsrebares.com>, <metropcsrebated.com>, <metropcsrebats.com>, <metropcsrebtes.com>, <metropcsrevates.com>, and <metropcstebates.com> domain names are registered with Interweb Advertising D.B.A. Profile Builder and that Respondent is the current registrant of the names. Interweb Advertising D.B.A. Profile Builder has verified that Respondent is bound by the Interweb Advertising D.B.A. Profile Builder 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 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@edgemetropcs.com, postmaster@metropcsbates.com, postmaster@metropcsebates.com, postmaster@metropcsedge.com, postmaster@metropcsgalaxy8offer.com, postmaster@metropcs-mmsmsbno.com, postmaster@metropcsmvno.com, postmaster@metropcsrabates.com, postmaster@metropcsrbates.com, postmaster@metropcsrebares.com, postmaster@metropcsrebated.com, postmaster@metropcsrebats.com, postmaster@metropcsrebtes.com, postmaster@metropcsrevates.com, and postmaster@metropcstebates.com. Also on October 27, 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 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 uses its METROPCS mark in conjunction with its T-Mobile flagship brands for wireless devices and communication services reaching more than 300 million people throughout the United States. See Compl. Ex. B. Complainant registered the METROPCS (Reg. No. 2,784,778 registered Nov. 18, 2003) mark with the United States Patent and Trademark Office (“USPTO”). See Compl. Ex. C. Respondent’s Disputed Domain Names are confusingly similar to Complainant’s mark because the Disputed Domain Names are comprised of the entire METROPCS mark, contain various generic or descriptive terms, and add the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the Disputed Domain Names. There is no evidence in the WHOIS information to suggest that Respondent is known by the Disputed Domain Names. Additionally, Respondent has never received any authorization or license from Complainant to use the METROPCS mark. Respondent is not using and has not used the Disputed Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s Disputed Domain Names are pay-per-click pages that feature links to Complainant, Complainant’s competitors, and solicitations to “buy this domain.” See Compl. Ex. G. Further, Respondent is using the Disputed Domain Names similar to Complainant’s famous METROPCS mark to facilitate delivery of malware which is not a legitimate use. See Compl. Ex. H.
Respondent registered and continues to use the Disputed Domain Names in bad faith. Respondent’s offers to sell the disputed domains are further evidence of bad faith. See Compl. Ex. G. Additionally, Respondent has been found to have acted in bad faith in at least one prior adverse UDRP decision, evidencing a pattern of conduct and bad faith in the current proceeding. See Compl. pg. 9 (Respondent was involved in the following case: FA1708001745155). Furthermore, Respondent is using Complainant’s METROPCS mark to redirect consumers to Complainant’s competitors which diverts and disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Compl. Ex. G. Moreover, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Some of Respondent’s diversions purport to install malware onto the user’s computer in further bad faith under Policy ¶ 4(a)(iii). See Compl. Ex. H. Also, Respondent, by registering domain names that are easily mistyped for the genuine URL <metropcsrebates.com>, has engaged in the practice of typo-squatting, which is further evidence of bath faith under the Policy. Lastly, Respondent registered the Disputed Domain Names with actual knowledge of Complainant’s rights to its mark, as shown by the registration of incorporating the entire mark within the domain names and the fame of the METRO PCS mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Respondent registered the domain names on the following dates: <edgemetropcs.com> (Jul. 7, 2017), <metropcsbates.com> (Jan. 29, 2017), <metropcsebates.com> (Feb. 24, 2017), <metropcsedge.com> (Jul. 28, 2017), <metropcsgalaxy8offer.com> (Apr. 28, 2017), <metropcs-mmsmsbno.com> (Dec. 1, 2016), <metropcsmvno.com> (Oct. 31, 2016), <metropcsrabates.com> (Mar. 4, 2017), <metropcsrbates.com> (Feb. 27, 2017), <metropcsrebares.com> (Jan. 30, 2017), <metropcsrebated.com> (Jan. 30, 2017), <metropcsrebats.com> (Mar. 4, 2017), <metropcsrebtes.com> (Mar. 7, 2017), <metropcsrevates.com> (Jan. 30, 2017), and <metropcstebates.com> (Feb. 13, 2017).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to these disputed domain names; and that Respondent has engaged in bad faith use and registration of each of the disputed domain names.
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.”).
The Panel finds that the disputed domain names are each confusingly similar to Complainant’s valid and subsisting trademark, METRO PCS. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain names by merely adding various generic words to Complainant’s mark in its entirety and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are each confusingly similar to Complainant’s trademark.
Additionally, the Panel finds that Respondent has no rights or legitimate interests in or to any of the disputed domain names. Respondent has no rights, permission or authority to register the disputed domain names. Respondent is also not commonly known by any of the disputed domain names. Respondent is not using and has not used the Disputed Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s Disputed Domain Names are pay-per-click pages that feature links to Complainant, Complainant’s competitors, and solicitations to “buy this domain.” See Compl. Ex. G. Further, Respondent is using the Disputed Domain Names similar to Complainant’s famous METROPCS mark to facilitate delivery of malware which is not a legitimate use. See Compl. Ex. H.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to any of the disputed domain names.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent has offered the Disputed Domain Names for sale to the public. Offers to sell disputed domain names can evince bad faith registration and use. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant provides screenshots of the resolving webpages, which show that Respondent lists the domain names for sale on their resolving webpages for various amounts. See Compl. Ex. G. Accordingly, the Panel finds that Respondent offers the domain names for sale to the general public in bad faith under Policy ¶ 4(b)(i).
Further, Complainant contends that Respondent has been found to have acted in bad faith in at least one prior adverse UDRP decision, evidencing a pattern of conduct and bad faith in the current proceeding. Prior adverse UDRP decisions can evince bad faith registration and use. See also Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides the UDRP case where Respondent was allegedly found to have acted in bad faith (FA1708001745155). See Compl. p. 9. Accordingly, the Panel finds that Respondent’s prior adverse UDRP decision raises the inference of bad faith in the current proceeding.
Additionally, Complainant alleges that Respondent uses Complainant’s METROPCS mark to redirect consumers to Complainant’s competitors which diverts and disrupts Complainant’s business under Policy ¶ 4(b)(iii). In doing so, Respondent attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Domain names redirecting to a complainant’s competitors and attempting to commercially benefit from a complainant’s goodwill associated with its trademark can evince bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) & (iv). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). See also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant provides screenshots of the resolving webpages for the domain names, which appear to be parked and contain various related and unrelated hyperlinks. See Compl. Ex. G. Therefore, the Panel finds that Respondent offers competing hyperlinks, disrupting Complainant’s business while attracting users to its own commercial webpage in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Moreover, Complainant contends that some of the links displayed on Respondent’s resolving domain purport to download malware onto the user’s computer. Evidence of installing malware onto a user’s computer can evince bad faith under Policy ¶ 4(a)(iii). See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Complainant demonstrates that Respondent engages in a phishing scheme to obtain users’ information and downloads malware onto the users’ computers. Using a confusingly similar domain name to phish for personal or financial information and downloading malware are both evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii)). Complainant provides a screenshot of the displayed message, which states “Malwarebytes blocked a suspected bad URL or an unwanted program.” See Compl. Ex. H. Accordingly, the Panel finds that Respondent’s diversions purport to install malware onto the user’s computer, further evincing bad faith under Policy ¶ 4(a)(iii).
Complainant also claims that Respondent, by registering domain names that are easily mistyped for Complainant’s own genuine URL, <metropcsrebates.com>, has engaged in the practice of typo-squatting. Misspellings of a mark in a disputed domain name can evince bad faith on the part of a respondent. 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.”). The following domain names registered by Respondent contain a misspelling (by one-two letters) of the word “rebate” from Complainant’s own domain name: <metropcsbates.com>, <metropcsebates.com>, <metropcsrabates.com>, <metropcsrbates.com>, <metropcsrebares.com>, <metropcsrebated.com>, <metropcsrebats.com>, <metropcsrebtes.com>, <metropcsrevates.com>, and <metropcstebates.com>. Accordingly, the Panel finds that Respondent engages in typo-squatting, which is further evidence of bad faith registration and use.
Finally, Complainant argues that Respondent had actual knowledge of Complainant's rights in the mark at the time of registration the Disputed Domain Names. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had prior knowledge of Complainant’s trademark and its rights therein.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <edgemetropcs.com>, <metropcsbates.com>, <metropcsebates.com>, <metropcsedge.com>, <metropcsgalaxy8offer.com>, <metropcs-mmsmsbno.com>, <metropcsmvno.com>, <metropcsrabates.com>, <metropcsrbates.com>, <metropcsrebares.com>, <metropcsrebated.com>, <metropcsrebats.com>, <metropcsrebtes.com>, <metropcsrevates.com>, and <metropcstebates.com> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 27, 2017
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