Affordable Care, Inc. v. ICS INC / ICS INC.
Claim Number: FA1605001674231
Complainant is Affordable Care, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC / ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <affordabledenyures.com> and <affordabeldentures.com>, registered with Tucows Domains Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2016; the Forum received payment on May 10, 2016.
On May 10, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <affordabledenyures.com> and <affordabeldentures.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 May 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@affordabledenyures.com, postmaster@affordabeldentures.com. Also on May 13, 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 June 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information
i. AFFORDABLE DENTURES for dental services. FIRST USE: 1977. FIRST USE IN COMMERCE: 1977 (U.S. Registration Number 2,546,707).
ii. AFFORDABLE DENTURES for dental management and support service organization services, namely providing non-clinical practice organization, management, and administrative support services to individual dentists or small group practices; providing a website for non-clinical dental practice management and administrative support services to individual dentists or group practices. FIRST USE: December 31, 1977. FIRST USE IN COMMERCE: December 31, 1977 (U.S. Registration Number 4,869,297).
Complainant is the owner of a federal trademark registration in the United States that consist of the word AFFORDABLE DENTURES. The Mark(s) cited above are hereafter referred to as the "Mark." See copies of TARR Reports from the United States Patent and Trademark Office (the "USPTO").
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Affordable Care, Inc. ("Affordable Care") is a national denture provider and owns the Affordable Dentures trademark which it uses in connection with its business of marketing and selling various goods and services, including the provision of dental services by practices it supports in interstate commerce.
Since 1977, Affordable Care has extensively used, and continues to use, the trademark and/or service mark Affordable Dentures alone and in connection with other words and designs for the provision of dental services by supported practices and related goods and services. Affordable Care has invested considerable money, time, and effort into the development of the Affordable Denture Marks. As a result of extensive use, advertising and promotion, Affordable Care owns strong common law rights in the Affordable Dentures marks, the trademarks have become well-known in the United States, and they embody very valuable goodwill.
The first Affordable Dentures dental practice opened in 1975 in Kinston, North Carolina when founding dentists, Dr. George Edwards, Jr., and Dr. Donald Henson, saw an opportunity in their community to build a practice for dentures and tooth extractions at affordable fees. Since then, Affordable Dentures has grown into a network of almost 200 affiliated practices operating in 40 states. In fact, the Affordable Dentures network is now the largest and fastest-growing denture-services provider in the U.S. More than six million patients have been treated across all of the affiliated practices since the opening of the first practice. Affordable Dentures not only improved the smiles of millions of patients but also improved their lives. Each practice has a common goal—to provide affordable denture services and dental care that are delivered with compassion, dignity and respect for all patients.
In addition to its common law rights in the Affordable Dentures marks, Affordable Care is the owner of the U.S. Trademark Registration No. 2,546,707 for the mark Affordable Dentures, for the goods and services referenced therein.
In short, Complainant enjoys wide consumer recognition and acceptance of its brand. Complainant owns the Mark cited in Section 4(c) above for which it has obtained federal trademark registrations. None of these federal mark registrations have been abandoned, cancelled, or revoked and have become incontestable through the filing of Section 8 and 15 affidavits with the USPTO.
a) The Disputed Domain Names are nearly identical and confusingly similar to Complainant's Marks.
By virtue of its federal trademark and/or service mark registrations, Complainant is the owner of the mark(s). See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"). As in other cases, it is also important to note that it is irrelevant for the purposes of Policy ¶ 4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
i. When comparing the Disputed Domain Names to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Names and the Complainant's mark(s). See Rollerblade, Inc. v. Chris McCready, WIPO Case No. D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.").
ii. The Disputed Domain Names are confusingly similar to Complainant's mark(s) because they differs by only a single character from Complainant's mark(s), or because they differ by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Names contain either:
a. the addition of one extra character, or...
b. the removal of one character, or...
c.one character which is incorrect, or...
d. two juxtaposed characters
iii. The Disputed Domain Names are, simply put, a classic example of "typosquatting.” The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).
b) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons:
i. Respondent has not been commonly known by the Disputed Domain Names. Upon information and belief, at the time Respondent registered the Domain Names, it had no trademark or intellectual property rights in the Domain Names. See Policy, ¶ 4(c)(ii). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202. See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy, ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).
ii. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
iii. Complainant has not given Respondent permission to use Complainant’s Mark in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).
iv. A "Cease and Desist" letter was sent to the Respondent. The letter informed Respondent that it was infringing on Complainant's IP rights and allowed Respondent the opportunity to respond if it had any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. The Respondent's failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000 ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
v. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Names fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Names. See Mattel, Inc. v. RaveClub Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
vi. Respondent is using (some or all of) the Disputed Domain Names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Names to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).
vii. The earliest date on which Respondent registered the Disputed Domain Names was December 10, 2012 (AFFORDABELDENTURES.COM), which is significantly after Complainant's first use in commerce, 1977 (AFFORDABLE DENTURES), as specified in its relevant registration with the USPTO.
viii. The earliest date on which Respondent registered the Disputed Domain Names was December 10, 2012 (AFFORDABELDENTURES.COM), which is significantly after Complainant's registration of their relevant Marks with the USPTO on March 12, 2002 (AFFORDABLE DENTURES).
ix. The earliest date on which Respondent registered the Disputed Domain Names was December 10, 2012 (AFFORDABELDENTURES.COM), which is significantly after Complainant's registration of AFFORDABLEDENTURES.COM on January 4, 1999.
c) The Disputed Domain Names should be considered as having been registered and being used in bad faith for the following reasons:
i. The Respondent has also listed (some or all of) the Disputed Domain names for sale. As shown in WIPO Decision D2001-1066, Trip.com, Inc. v. Daniel Deamone, "A fourth factor is that Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent's offer of the Disputed Domain Names for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy." The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000); see also WIPO Case No. D2003-0689, Mr. Donning Eric v. Mr. Nyunhwa Jung,..."The posting of the announcement: "This domain is for SALE!" constitutes satisfactory evidence, when combined with the Respondent's lack of legitimate rights to or interests in the domain name, that the Respondent's primary purpose in registering the domain name was to sell it in contravention of the Policy (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036).
ii. Respondent's bad faith is further shown by the Respondent using (some or all of) the Disputed Domain Names’ websites in connection with generating revenue as "click through" websites, by using the Complainant's registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant's well-known mark to achieve a wrongful competitive advantage and commercially gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains "the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and travels, in the form of a ‘click through’ website.” In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click through" website has to be considered as evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)".
iii. To further stress the above, Respondent's setting up of a "click through" website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent's bad faith. The Respondent has registered and used the Disputed Domain Names in bad faith pursuant to Policy ¶ 4(b)(iv) by using the Disputed Domain Names to attract and mislead consumers for its own profit. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) ("Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent's own commercial gain is evidence of bad faith registration and use pursuant to Policy 4(b)(iv)."); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant's mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy 4(b)(iv).
iv. In addition to the above, the Respondent's advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant's business. The Panel should find that this effort to divert consumers and disrupt Complainant's business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int'l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent's website featured hyperlinks to competing websites and included a link to the complainant's website, the respondent's use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
v. Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Names to display Complainant's Mark(s) spelled correctly (even though the domain name(s) is a misspelled version of the same mark(s)). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).
vi. Respondent has caused the websites reachable by (some or all of) the Disputed Domain Names to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.
vii. Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").
viii. Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence indicating a respondent's bad faith use and registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) ("These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy 4(b)(ii).").
ix. Respondent holds registrations on other domain names that appear to be straight forward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent. See Policy ¶ 4(b)(ii) and Time Warner Inc. v. Zone MP3, NAF Claim No. FA0706001008035 (typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith); see also Citigroup Inc. v. Digi Real Estate Foundation, NAF Claim No. FA0704000964679.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used 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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Identical and/or Confusingly Similar
Complainant registered the AFFORDABLE DENTURES trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,546,707, registered Mar. 12, 2002; Reg. No. 4,869,297, registered Dec. 15, 2015) for use in connection with its business of marketing and selling various goods and services, including dental services. At this point in a Proceeding, a complainant need only show it has rights to the mark in question under Policy ¶ 4(a)(i). This is most commonly shown by registration of the mark with a governmental authority (such as the USPTO). This element does not require a complainant to show it has rights in the respondent’s home country or complainant has superior rights to respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant’s USPTO registration satisfies Complainant’s burden of proof under Policy ¶ 4(a)(i).
Respondent’s <affordabledenyures.com> and <affordabeldentures.com> domain names are confusingly similar to the AFFORDABLE DENTURES mark because they are just slightly scrambled versions of the mark with the addition of the gTLD “.com.” Respondent uses Complainant’s entire mark. Respondent is attempting to take advantage of common typographic errors, inserting “y” instead of “t” (which are very close on the common QWERTY keyboard) for the word “dentures” and transposing “e” and “l” in “affordable,” to attract Internet users to the disputed domain names. Transposing letters in a mark has been generally found not to adequately distinguish a disputed domain name from a mark. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Forum July 23, 2002) (finding the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was evidence the domain name was confusingly similar to the mark); see also RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.). The presence of a gTLD must be ignored under a Policy ¶ 4(a)(i) analysis because domain name syntax requires a TLD, whether it is a gTLD, sTLD or a ccTLD. Respondent’s disputed domain names are confusingly similar to the AFFORDABLE DENTURES mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Rights or Legitimate Interests
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has not been commonly known by the disputed domain names. The WHOIS information associated with the disputed domains indicates “ICS INC.,” as the registrant, which does not appear to resemble the domains at issue. Panels routinely find a respondent is not commonly known by a disputed domain name based on the WHOIS information when there is a lack of any supporting information. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). There is no other information in this Proceeding. Respondent is not commonly known by the <affordabledenyures.com> and <affordabeldentures.com> domains under Policy ¶ 4(c)(ii).
Complainant claims Respondent’s use of the disputed domains is not (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. Respondent appears to use the disputed domains to host a generic dynamic landing page with links with titles such as, “Best Dentures,” “Dentist Locations,” and “Partial dentures Cost.” Using a confusingly similar domain to resolve to a website hosting competing and unrelated links is not (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. See W Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Respondent’s use does not fall within the parameters of either Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Respondent clearly has no rights and legitimate interests in the disputed domain names.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Registration and Use in Bad Faith
Complainant claims Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Respondent makes a general offer to sell the disputed domain names. This means Respondent has acted in bad faith under Policy ¶ 4(b)(i). 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 claims Respondent is a serial cybersquatter with prior UDRP case decisions against it, which would support a finding of bad faith under Policy ¶ 4(b)(ii). This Panel disagrees because Policy ¶ 4(b)(ii) requires Complainant be prevented form registering a domain name to reflect its mark. This has not occurred because Complainant has reflected its mark in AFFORDABLEDENTURES.COM since 1999. While there is decision precedent to the contrary, this Panel declines to follow it under the facts of this case.
Complainant claims Respondent’s use of the domains <affordabledenyures.com> and <affordabeldentures.com> are competing with, and disrupting, Complainant’s business. Respondent uses the domains to host a generic landing page hosting various competing commercial links and advertisements. A respondent registered and uses a domain name in bad faith where a respondent directed users to a website hosting competing commercial links. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant claims Respondent has acted in bad faith through confusing and attracting Internet users to Respondent’s domain for commercial profit. Again, Respondent uses its domains to resolve to websites hosting commercial links, some of which appear to compete with Complainant. It is common knowledge such links pay Respondent for each “click through,” even if it is only for free web hosting (which confers an obvious benefit on Respondent). Respondent is using the obvious similarity between the <affordabledenyures.com> and <affordabeldentures.com> domains and the AFFORDABLE DENTURES mark for the purpose of confusing and attracting Internet users for commercial profit, leading to the conclusion Respondent has acted in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <affordabledenyures.com> and <affordabeldentures.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, June 10, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page