UniRush, LLC v. PrivacyProtect.org / Domain Admin
Claim Number: FA1304001493723
Complainant is UniRush, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rishcard.com> and <rucshcard.com>, registered with RegisterMatrix.com Corp.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 16, 2013, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <rishcard.com> and <rucshcard.com> domain names are registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the names. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 April 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2013 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@rishcard.com and postmaster@rucshcard.com. Also on April 22, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
a) Complainant’s Rights / Confusing Similarity
a. Complainant holds United States Patent & Trademark Office (“USPTO”) trademark registrations for the RUSHCARD mark, used for magnetically encoded pre-paid debit cards. See Reg. No. 2,826,230 registered on March 23, 2004.
b. The <rishcard.com> and <rucshcard.com> domain names are confusingly similar to the RUSHCARD mark. Both include the irrelevant generic top-level domain (“gTLD”) “.com,” along with single-character alterations to the RUSHCARD mark.
b) Respondent Lacks Rights & Legitimate Interests
a. Respondent is not commonly known by these domain names, but is instead known as an entity other than the trademark associated with Complainant. Complainant has not permitted or authorized Respondent’s use of its mark in domain names. Complainant has no affiliation with Respondent.
b. Respondent is using the domain names to redirect Internet users to websites that host generic hyperlinks to third-party websites, some of which compete with Complainant.
c. Respondent has engaged in typosquatting, intending to take advantage of Internet users mistakes for its own gain.
c) Respondent’s Bad Faith Use & Registration
a. Respondent has listed the <rishcard.com> domain name for sale. This is evidence of bad faith use and registration, even if the domain name is being offered to a third party.
b. Respondent’s decision to host competing hyperlinks on the disputed domain name amounts to bad faith commercial disruption. Internet users that click on these links are diverted away from Complainant’s business and will end up doing business with Complainant’s competitors.
c. Respondent is using the domain names to generate click-through revenues through hyperlink websites. Respondent therefore has an incentive to trick and confuse Internet users into mistakenly viewing its websites so that Respondent may continue to accrue advertising revenues.
d. Respondent has engaged in typosquatting, which is in itself evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <rishcard.com> was registered on December 13, 2005, and <rucshcard.com> was registered on December 27, 2005.
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(e), 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 (Nat. Arb. 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 holds USPTO trademark registrations for the RUSHCARD mark, used for magnetically encoded pre-paid debit cards. See Reg. No. 2,826,230 registered on March 23, 2004. The Panel agrees that registration of a mark with a national trademark agency such as the USPTO is a sufficient showing of Complainant’s Policy ¶ 4(a)(i) rights in the mark, regardless of where Respondent is actually located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the 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.”).
Complainant also argues that the <rishcard.com> and <rucshcard.com> domain names are confusingly similar to the RUSHCARD mark. Complainant notes that both include single-character alterations to the RUSHCARD mark. The Panel agrees that the domain names are confusingly similar to the RUSHCARD mark under Policy ¶ 4(a)(i) because Respondent has made single-character changes to the distinct mark.
Complainant argues that Respondent is not commonly known by these domain names, but is instead known as an entity other than the trademark associated with Complainant. Complainant has not permitted or authorized Respondent’s use of its mark in domain names. Complainant has no affiliation with Respondent. The Panel notes that the WHOIS information lists “PrivacyProtect.org / Domain Admin” as the registrant of the domain names. The Panel agrees that based upon the evidence in the record, as well as the WHOIS information, there is nothing to prove that Respondent is commonly known as the <rishcard.com> and <rucshcard.com> domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further argues that Respondent is using the domain names to redirect Internet users to websites that host generic hyperlinks to third-party websites, some of which compete with Complainant. The Panel notes that the disputed domain names resolve to websites that promote Complainant’s own products, along with many of Complainant’s primary competitors, with other hyperlinks leading to wholly unrelated websites. The Panel agrees that Respondent’s use of the domain names for purposes of hosting hyperlink websites is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant further argues that Respondent has engaged in typosquatting, intending to take advantage of Internet users mistakes for its own gain. The Panel agrees that in registering domain names that take the RUSHCARD mark and alter the mark to reflect typographical errors, Respondent fails to illustrate any real Policy ¶ 4(a)(ii) rights and legitimate interests in the domain names. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s decision to host competing hyperlinks on the disputed domain name amounts to bad faith commercial disruption. Complainant believes that Internet users that click on these links are diverted away from Complainant’s business and may end up doing business with Complainant’s competitors. The Panel notes that several of Complainant’s competitors have prime spots in the disputed domain names’ resolving websites. The Panel agrees that Respondent’s use of the domain names for purposes of hosting links to Complainant’s competitors demonstrates bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent’s use of the domain names to generate click-through revenues through hyperlink websites is done with an intent to confuse Internet users into believing Complainant has some association with these hyperlinks. Complainant claims that Respondent therefore has an incentive to trick and confuse Internet users so that Respondent may accrue advertising revenues. The Panel concludes that Respondent has attempted to register and use these domain names in a Policy ¶4(b)(iv) bad faith attempt to confuse Internet users into clicking on competing hyperlinks under the belief that the content has been approved by Complainant in order to derive advertising revenue. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant claims that Respondent has engaged in typosquatting, which is in itself evidence of bad faith. The Panel agrees that in registering these domain names, both of which differ from the mark by a single-character alteration, Respondent registered Complainant’s mark in bad faith under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rishcard.com> and <rucshcard.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 7, 2013
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