MobileTrac LLC d/b/a InstaVIN v. Rizig SAYES
Claim Number: FA1803001774900
Complainant is MobileTrac LLC d/b/a InstaVIN (“Complainant”), represented by Louis T. Perry of Faegre Baker Daniels LLP, Indiana, USA. Respondent is Rizig SAYES (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instavin.me>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 7, 2018; the Forum received payment on March 7, 2018.
On March 7, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <instavin.me> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2018 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@instavin.me. Also on March 9, 2018, 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 March 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the INSTAVIN mark, Complainant provides motor vehicle history information to Internet users through its website, mobile app and automotive dealerships.
Complainant holds a registration for the INSTAVIN service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,100,601, registered February 21, 2012.
Respondent registered the domain name <instavin.me> on November 26, 2017.
The domain name is confusingly similar to Complainant’s INSTAVIN mark.
Respondent has no rights to or legitimate interests in the domain name.
Respondent is not authorized to use Complainant’s INSTAVIN mark.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead Respondent uses the domain name and its resolving website to compete with Complainant’s goods and services.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent had actual knowledge of Complainant’s rights in the INSTAVIN mark at the time Respondent registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the INSTAVIN service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of a mark with the USPTO adequately proved its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Canada). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <instavin.me> domain name is substantively identical and confusingly similar to Complainant’s INSTAVIN service mark. The domain name contains the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.me,” which is the country code for Montenegro but is also unofficially marketed and used as a domain name hack (as, for example, in hear.me, meet.me, etc.). This alteration of the mark, made in forming the domain name, does not save it from the realm of identity or confusing similarity under the standards of the Policy. See, for example, Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum April 21, 2014):
Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark …. Accordingly, the Panel finds that Respondent’s … domain name is confusingly similar to Complainant’s … mark.
See also Crocs, Inc. v. [Registrant], FA 1043196 (Forum September 2, 2007) (finding that “the addition of a ccTLD [to the mark of another in creating a domain name] is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <instavin.me> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (ForumAugust 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (ForumSeptember 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <instavin.me> domain name, and that Complainant has not authorized Respondent to use the INSTAVIN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Rizig SAYES,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <instavin.me> domain name and its resolving website to compete directly with the business of Complainant in the provision of car history services. In the circumstances described in the Complaint, we may comfortably presume that Respondent seeks to profit commercially from this use of the domain name. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that a Respondent’s use of a domain name that was confusingly similar to the mark of a UDRP complainant in order to compete with that complainant’s business was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <instavin.me> domain name, as alleged in the Complaint, disrupts Complainant’s online car history business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (finding bad faith registration and use where a respondent used a domain name that was confusingly similar to the mark of a UDRP complainant to disrupt that complainant’s business by diverting Internet users from that complainant’s website to Respondent’s website, where it offered competing products).
We are also convinced by the evidence that Respondent uses the <instavin.me> domain name, which is confusingly similar to Complainant’s INSTAVIN mark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this too stands as proof of Respondent’s bad faith in registering and using the domain name. See CAN Financial Corporation v. William Thomson, FA1401001541484 (Forum February 28, 2014) (finding that a respondent demonstrated bad faith under Policy ¶ 4(b)(iv) by using a domain name that was confusingly similar to the mark of a UDRP complainant to attract Internet users to a website at which it sold competing services).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the INSTAVIN mark when Respondent registered the <instavin.me> domain name. This further shows Respondent’s bad faith in registering the domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent has [sic] actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s … mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <instavin.me> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 11, 2018
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