MPowRx Health and Wellness Products 2012 Inc. v. Domain Administrator
Claim Number: FA1604001670448
Complainant is MPowRx Health and Wellness 2012 Inc. (“Complainant”), represented by David Burke, Alberta, Canada. Respondent is Domain Administrator (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodmorningsnoresolutions.com>, registered with Fabulous.com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2016; the Forum received payment on April 14, 2016.
On April 18, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <goodmorningsnoresolutions.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2016 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@goodmorningsnoresolutions.com. Also on April 22, 2016, 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 May 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant has registered the GOOD MORNING SNORE SOLUTION mark with multiple trademark authorities internationally, including the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA812,825, registered Nov. 28, 2011). Respondent’s <goodmorningsnoresolutions.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name removes the spaces between the words of the mark, adds “s” to the end of the mark, and adds the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <goodmorningsnoresolutions.com> domain name. Respondent is using the disputed domain name to host third party links that compete with Complainant’s business, which does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use.
The <goodmorningsnoresolutions.com> domain name was registered in bad faith. Respondent is attempting to siphon off Internet traffic seeking Complainant and redirect it towards its own webpage offering links to competing snore-related products, presumably netting a pay-per-click fee in the process. The use of a privacy shield should be viewed as further evidence that Respondent has acted in bad faith in registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company engaged in the business of providing products in the sleep industry.
2. Complainant has registered the GOOD MORNING SNORE SOLUTION mark with multiple trademark authorities internationally, including the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA812,825, registered Nov. 28, 2011).
3. Respondent registered the <goodmorningsnoresolutions.com> domain name on April 25, 2013.
4. Respondent is using the disputed domain name to host third party links that compete with Complainant’s business.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has submitted evidence that it has registered the GOOD MORNING SNORE SOLUTION mark with multiple trademark authorities internationally, including the CIPO (Reg. No. TMA812,825, registered Nov. 28, 2011). See Compl., at Ex 1. A valid registration with the CIPO is sufficient to establish rights under Policy ¶ 4(a)(i). See, e.g., State Farm Mutual Automobile Insurance Company v. VistaPrint Technologies c/o Vistaprint North American Services Corp., FA 1617798 (Forum June 3, 2015). Despite Australia and Canada both being in the British Commonwealth, they maintain their own intellectual property offices, however, registration in the country in which Respondent operates in is not required to prove rights under Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1579014 (Forum Oct. 8, 2014) (finding that although Respondent resides in Australia, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent resides).
The second issue that arises is whether the disputed <goodmorningsnoresolutions.com> domain name is identical or confusingly similar to Complainant’s GOOD MORNING SNORE SOLUTION mark. Complainant asserts that the domain name is confusingly similar to Complainant’s mark. Complainant directs the Panel’s attention to the removal of spaces between the words of the mark, the addition of the letter “s” to the end of the mark, and the addition of the gTLD “.com.” The very nature of domain name syntax does not allow space between words and a gTLD is necessary in the establishment of the domain name. Therefore, the removal of spaces and the addition of a gTLD does little to distinguish a domain name from a mark. See, e.g., Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). Furthermore, in Ancestry.com Operations Inc. v. Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev, FA 1327838 (Forum July 13, 2010) the panel found that the respondent’s <familytreemakers.com> domain name was confusingly similar to the complainant’s FAMILY TREE MAKER trademark because the addition of the letter “s” was insufficient to distinguish the domain name from the mark. The Panel agrees with previous decisions and finds that the alterations present in the <goodmorningsnoresolutions.com> domain name are insufficient to deny Complainant rights under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GOOD MORNING SNORE SOLUTION mark and to use it in its domain name and has added only the letter “s” to the trademark which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on April 25, 2013;
(c) The domain name resolves to a website that hosts third party links that compete with Complainant’s business;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant does not make any contentions regarding Policy ¶ 4(c)(ii). Traditionally Panels have looked to the WHOIS information to make a Policy ¶ 4(c)(ii) analysis. The Panel notes the available WHOIS merely lists “Administrator / Domain Administrator.” As such, the Panel finds no basis in the available record to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply);
(e) Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that searching for the <goodmorningsnoresolutions.com> domain name through a search engine provides pay-per-click links to competing snore related products. See Compl., at Ex. 2. While Complainant has not submitted any materials concerning Respondent’s actual use of the disputed domain name, the Panel may undertake limited factual research into matters of public record that it deems necessary in reaching a decision. See, e.g., Givi Srl & G. Visenzi Motomarket Srl v. Shahi, D2005-0392 (WIPO July 11, 2005). Entering the <goodmorningsnoresolutions.com> domain name into a web browser resolves to a parked page with unrelated links to gym and fitness products. Prior panels have decided that a respondent’s use of a disputed domain to display unrelated hyperlinks 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). 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.”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent’s registration of a confusingly similar domain name siphons off internet traffic intended for Complainant while generating advertisements that compete with Complainant. As the Panel recalls, the disputed domain name resolves to a parked page with links to products unrelated to Complainant. Prior panels have held that a respondent engaged in bad faith registration and use where it used a disputed domain name to divert Internet users to a webpage displaying links unrelated to Complainant presumably for commercial gain. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, the Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it agrees that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GOOD MORNING SNORE SOLUTION mark and in view of the conduct that Respondent engaged in when using the <goodmorningsnoresolutions.com> domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goodmorningsnoresolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 18, 2016
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