Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. v. Carolina Rodrigues
Claim Number: FA1605001675674
Complainant is Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Carolina Rodrigues (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com>, registered with Internet Domain Service BS 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 Forum electronically on May 19, 2016; the Forum received payment on May 19, 2016.
On May 20, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS 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 May 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@americmark.com, postmaster@carolwrights.com, and postmaster@carolwrigtgifts.com. Also on May 20, 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 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant uses the AMERIMARK mark in connection with its order catalog services and online ordering services and the CAROL WRIGHT mark in connection with its direct mail marketing services. Complainant has registered the AMERIMARK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,648,156, registered Nov. 12, 2002), which demonstrates rights in the mark. Complainant has also registered the CAROL WRIGHT mark with the USPTO (e.g., Reg. No. 1,571,260, registered Dec. 12, 1989), which demonstrates rights in the CAROL WRIGHT mark. Respondent’s <americmark.com> domain name is confusingly similar to the AMERIMARK mark because it incorporates the mark in its entirety, only adding the letter “c”. Respondent’s <carolwrights.com> is confusingly similar to the CAROL WRIGHT mark because it incorporates the mark in its entirety, less the space, and adds the letter “s”. Further, Respondent’s <carolwrigtgifts.com> domain name is confusingly similar to the CAROL WRIGHT mark because it incorporates the entire mark except the space and the letter “h” and only adds the descriptive term “gifts”.
Respondent has no rights or legitimate interests in the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names. Respondent is not commonly known by the disputed domain names. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names. Rather, the domain names resolve to websites containing hyperlinks that either purport to redirect to third-party websites, some in competition with Complainant, or to Complainant’s own products and services.
Respondent has listed the <americmark.com> and <carolwrights.com> domain names for sale, constituting bad faith under Policy ¶ 4(b)(i). Respondent has a pattern of domain name misuse as evidenced by multiple prior UDRP decisions ordering Respondent to transfer its domain names back to the trademark owners. Respondent’s registration and use of the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names serves as a disruption of Complainant’s legitimate business purposes because of the inclusion of competing hyperlinks. Further, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that the <americmark.com> domain name was registered on October 11, 2004, the <carolwrights.com> domain name was registered on March 17, 2002, and the <carolwrigtgifts.com> domain name was registered on October 12, 2004.
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.”).
Complainant uses the AMERIMARK mark in connection with its order catalog services and online ordering services and the CAROL WRIGHT mark in connection with its direct mail marketing services. Complainant claims it has registered the AMERIMARK mark with the USPTO (e.g., Reg. No. 2,648,156, registered Nov. 12, 2002), which it contends demonstrates rights in the mark. Complainant claims it has also registered the CAROL WRIGHT mark with the USPTO (e.g., Reg. No. 1,571,260, registered Dec. 12, 1989), which it contends demonstrates rights in the CAROL WRIGHT mark. Panels have found registration with the USPTO to be sufficient to establish rights in a trademark, even where the respondent operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, the Panel finds that Complainant has demonstrates rights in the AMERIMARK and CAROL WRIGHT marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <americmark.com> domain name is confusingly similar to the AMERIMARK mark because it incorporates the mark in its entirety, only adding the letter “c”. Complainant also contends that Respondent’s <carolwrights.com> is confusingly similar to the CAROL WRIGHT mark because it incorporates the mark in its entirety, less the space, and adds the letter “s”. Complainant further argues that Respondent’s <carolwrigtgifts.com> domain name is confusingly similar to the CAROL WRIGHT mark because it incorporates the entire mark except the space and the letter “h” and only adds the descriptive term “gifts”. Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Am. Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). The Panel therefore agrees that Respondent’s <americmark.com> domain name is confusingly similar to the AMERIMARK mark and the <carolwrights.com> and <carolwrigtgifts.com> domain names are confusingly similar to the CAROL WRIGHT mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names. First, Complainant asserts that Respondent is not commonly known by the disputed domain names. The Panel sees that the WHOIS information regarding the disputed domain names lists “Carolina Rodrigues” as registrant. Complainant also asserts that it has not given Respondent permission to use its AMERIMARK and CAROL WRIGHT marks. The Panel notes that Respondent has not submitted a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names. Rather, Complainant contends that the domain names resolve to websites containing hyperlinks that either purport to redirect to third-party websites, some in competition with Complainant, or to Complainant’s own products and services. The link titles include “Online Shopping,” “AmeriMark: Official Site,” “Hertz Special Offers,” and “Get Google Chrome.” Complainant contends that Respondent receives a pay-per-click revenue in connection with the links. Panels have found a respondent’s use of a complainant’s mark to operate a pay-per-click website containing links to unrelated third parties, competitors of the complainant, or to the services of the complainant itself not to constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has listed the <americmark.com> and <carolwrights.com> domain names for sale, constituting bad faith under Policy ¶ 4(b)(i). Complainant claims that Respondent offered these two domain names for sale on an online auction. Complainant further contends that the offering of a domain name for sale supports a finding of bad faith even when the offer is made to a third party, rather than to the complainant. Panels have found offers to sell domain names containing a complainant’s mark to the public to constitute some evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant
also argues that Respondent has a pattern of domain name misuse as evidenced by
multiple prior UDRP decisions ordering Respondent to transfer its domain names
back to the trademark owners. The Panel notes that a history of adverse UDRP
decisions also shows a pattern of bad faith registration and use pursuant to
Policy ¶ 4(b)(ii). See
Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA 1625928 (Forum
Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to
Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous
UDRP cases).
Further, Complainant contends that Respondent’s registration and use of the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names serves as a disruption of Complainant’s legitimate business purposes because of the inclusion of competing hyperlinks. Panels have found a respondent’s diversion of Internet users to competitors via hyperlinks related to a complainant’s legitimate business constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA 1622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Therefore, the Panel agrees that Respondent’s registration and use of the <americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names constitute bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the websites. Complainant contends that Respondent registered the domain name to create a likelihood of confusion with Complainant and Complainant’s marks in order to profit from users looking for Complainant’s online ordering services. The Panel again agrees with Complainant and holds that Internet user confusion that results in the redirection to Respondent’s site with links to Complainant’s services and those of competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See The Dress Barn, Inc. v. Pham Dinh Nhut, FA 1611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”).
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<americmark.com>, <carolwrights.com>, and <carolwrigtgifts.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 30, 2016
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