Research Now Group, Inc. v. Vernon Pursley
Claim Number: FA1604001671363
Complainant is Research Now Group, Inc. (“Complainant”), represented by Denis V. Shamo of Baker & McKenzie LLP, Texas, USA. Respondent is Vernon Pursley (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <researchnow.site> and <researchnow.online>, registered with NameCheap, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 20, 2016; the Forum received payment April 20, 2016.
On April 21, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <researchnow.site> and <researchnow.online> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. verified that Respondent is bound by the NameCheap, Inc. registration agreement and 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 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@researchnow.site, and postmaster@researchnow.online. Also on April 25, 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 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the RESEARCH NOW mark in connection with its world-class research services. Complainant registered the RESEARCH NOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,025,122, registered September 13, 2011), which demonstrates Complainant’s rights in the mark. The Panel notes that the Attached Annex 6 is a copy of Complainant’s USPTO registration. The <researchnow.site> and <researchnow.online> domains are confusingly similar to Complainant’s mark as they wholly incorporate the RESEARCH NOW mark, eliminate the spacing between the words of Complainant’s mark, and add the generic top-level domains (“gTLDs”) “.site” and “.online.”
Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent fails to make any active use of the domains. Attached Annex 7 contains screenshots of Respondent’s resolving webpages.
Respondent registered and is using the disputed domain names in bad faith. First, Respondent fails to make any active use of the domains, in violation of Policy ¶ 4(a)(iii). Second, Respondent demonstrated opportunistic bad faith by registering the disputed domains just one month after receiving notice of a UDRP complaint filed by Complainant against Respondent regarding the researchnow.xyz domain name. Finally, Respondent’s conduct shows that Respondent registered the domains with actual knowledge of Complainant’s mark and its rights therein based on Respondent’s notice of the UDRP complaint filed by Complainant against Respondent.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <researchnow.site> and <researchnow.online> disputed domains February 26, 2016.
Complainant established rights and legitimate interests in the mark contained within the disputed domain names.
Respondent registered two confusingly similar domain names using Complainant’s protected marks and without rights or legitimate interests in the mark and consequently in the disputed domain names.
Respondent registered and holds the disputed domain names passively 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the RESEARCH NOW mark in connection with its world-class research services. Complainant registered the RESEARCH NOW mark with the USPTO (e.g., Reg. No. 4,025,122, registered September 13, 2011), which Complainant argues demonstrates its rights in the mark. Attached Annex 6 provides a copy of Complainant’s USPTO registration. The Panel finds that trademark registrations with the USPTO demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, this Panel finds that Complainant demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
The <researchnow.site> and <researchnow.online> domains are confusingly similar to Complainant’s mark as they wholly incorporate the RESEARCH NOW mark, eliminate the spacing between the words of Complainant’s mark, and add the gTLDs “.site” and “.online.” Neither elimination of the spacing between the words of a complainant’s mark nor affixation of a gTLD distinguishes a respondent’s disputed domain from a complainant’s protected mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered domain names that are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Further, Complainant contends that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Vernon Pursley” as registrant and that Respondent failed to provide any evidence for the Panel’s consideration. Attached Annex 4 contains additional WHOIS information. As such, the Panel finds no evidence in the available record that Respondent is commonly known by the disputed domain names 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).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent fails to make any active use of the domains. Attached Annex 7 contains screenshots of Respondent’s resolving webpages. A respondent’s failure to make any active use of a domain 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent is not using the disputed domain names 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; Complainant’ satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant argues that Respondent fails to make any active use of the domains, in violation of Policy ¶ 4(a)(iii). A respondent’s failure to make any active use of a domain constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). For this reason, the Panel finds that Respondent registered and is passively holding the domains in bad faith per Policy ¶ 4(a)(iii).
Complainant contends that Respondent demonstrated opportunistic bad faith by registering the disputed domains just one month after receiving notice of a UDRP complaint filed by Complainant against Respondent regarding Respondent’s researchnow.xyz domain name; Complainant asserts that it filed its UDRP complaint against Respondent January 28, 2016, and that Respondent registered the disputed domains February 26, 2016. Timing of a respondent’s registration of a domain can be compelling evidence of opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). This Panel agrees with Complainant’s contention that the timing of Respondent’s domain name registrations suggests opportunistic conduct, and the Panel finds that notwithstanding the possible confusion of dates, Respondent’s registrations permit the Panel to make an inference that Respondent knew about Complainant’s rights in the mark and engaged in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant alleges that Respondent registered the domains with actual knowledge of Complainant’s mark and its rights therein based on Respondent’s notice of the UDRP complaint filed by Complainant against Respondent. A respondent demonstrates bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the Respondent registered that disputed domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <researchnow.site> and <researchnow.online> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 1, 2016.
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