The Endurance International Group, Inc. and its companies, Bluehost Inc. and Hostgator.com, LLC v. Administrator Dom / Muscari Holding Limited
Claim Number: FA1607001684069
Complainant is The Endurance International Group, Inc. and its companies, Bluehost Inc. and Hostgator.com, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Administrator Dom / Muscari Holding Limited (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bljehost.com>, <bluehosg.com>, <bluehoxt.com>, <bouehost.com>, <hoatgator.com>, <hosgator.com>, <hosstgator.com>, <hostagtor.com>, <hostgataor.com>, <hostgatod.com>, <hostgatof.com>, <hostgatorr.com>, <hostgators.com>, <hotgator.com>, <jsthost.com>, <jsuthost.com>, <justhst.com>, <justohst.com>, <justost.com>, <juthost.com>, <usthost.com>, and <wwwjusthost.com>, registered with Eurodns S.A.
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 July 15, 2016; the Forum received payment on July 15, 2016.
On Jul 19, 2016, Eurodns S.A. confirmed by e-mail to the Forum that the <bljehost.com>, <bluehosg.com>, <bluehoxt.com>, <bouehost.com>, <hoatgator.com>, <hosgator.com>, <hosstgator.com>, <hostagtor.com>, <hostgataor.com>, <hostgatod.com>, <hostgatof.com>, <hostgatorr.com>, <hostgators.com>, <hotgator.com>, <jsthost.com>, <jsuthost.com>, <justhst.com>, <justohst.com>, <justost.com>, <juthost.com>, <usthost.com>, and <wwwjusthost.com> domain names are registered with Eurodns S.A. and that Respondent is the current registrant of the names. Eurodns S.A. has verified that Respondent is bound by the Eurodns S.A. 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 July 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@bljehost.com, postmaster@bluehosg.com, postmaster@bluehoxt.com, postmaster@bouehost.com, postmaster@hoatgator.com, postmaster@hosgator.com, postmaster@hosstgator.com, postmaster@hostagtor.com, postmaster@hostgataor.com, postmaster@hostgatod.com, postmaster@hostgatof.com, postmaster@hostgatorr.com, postmaster@hostgators.com, postmaster@hotgator.com, postmaster@jsthost.com, postmaster@jsuthost.com, postmaster@justhst.com, postmaster@justohst.com, postmaster@justost.com, postmaster@juthost.com, postmaster@usthost.com, and postmaster@wwwjusthost.com. Also on July 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 August 24, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the following trademarks: bluehost (Reg. No. 3,417,116, registered Apr. 29, 2008), HostGator (Reg. No. 3,193,860, registered Jan. 2, 2007), and JUST HOST (Reg. No. 4,073,374, registered Dec. 20, 2011). The bluehost and HostGator marks are used in connection with the sale of computer services, mainly managing websites for third parties, and the JUST HOST mark is used to provide e-mail services and multiple-user access to a global computer information network. The disputed domain names are confusingly similar because they all contain the entire bluehost mark and differ only by the removal and/or addition of a single letter, on top of the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Furthermore, Respondent is using some of the domain names to redirect Internet users to a webpage containing competing hyperlinks. Respondent is also using other domain names to redirect to Complainant’s own website in violation of the affiliate agreement Respondent entered into with Complainant.
Respondent has engaged in bad faith registration and use. Respondent has displayed bad faith under Policy ¶ 4(b)(i) by attempting to sell the domain name to the public. Respondent has engaged in bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through the use of competing hyperlinks. Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Additionally, Respondent is using some of the domain names to redirect Internet users to Complainant’s own website in violation of the affiliate agreement Respondent entered into with Complainant. Respondent has also acted in bad faith by registering the disputed domain names with actual knowledge of Complainant’s trademark rights. Lastly, the registration of the disputed domain names constitutes typosquatting, which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of the sale of computer services, managing websites for third parties and the provision of e-mail services and multiple-user access to a global computer information network.
2. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the following trademarks: bluehost (Reg. No. 3,417,116, registered Apr. 29, 2008), HostGator (Reg. No. 3,193,860, registered Jan. 2, 2007), and JUST HOST (Reg. No. 4,073,374, registered Dec. 20, 2011).
3. The <bluehosg.com>, <bluehoxt.com>, and <bouehost.com> domain names were registered on October 22, 2008; the <bljehost.com> domain name was registered on August 19, 2008 ( “the bluehost domain names“); the <jsthost.com>, <jsuthost.com>, <juthost.com> domain names were registered on November 9, 2008; the <justhst.com>, <justohst.com>, <justost.com> and <usthost.com> domain names were registered on November 10, 2008; and the <wwwjusthost.com> domain name was registered on November 12, 2008 (“the just host domain names”); the <hostgators.com> domain name was registered on November 25, 2004; the <hosgator.com> domain name was registered on November 1, 2005; the <hostagtor.com> domain name was registered on January 3, 2006; the <hostgatorr.com> domain name was registered on January 27, 2006; the <hosstgator.com> and <hoatgator.com> domain names were registered March 19, 2006; the <hotgator.com> domain name was registered October 24, 2006; the <hostgatod.com> domain name was registered August 19, 2008; the <hostgataor.com> domain name was registered on October 29, 2008; and the <hostgatof.com> domain name was registered on November 1, 2008 (“the hostgator domain names”).
4. Respondent has used the domain names variously to redirect Internet users to a webpage containing competing hyperlinks, redirect to Complainant’s own website in violation of the affiliate agreement
Respondent entered into with Complainant, disrupt Complainant’s business through the use of competing hyperlinks, profit from a likelihood of confusion and engage in other conduct with respect to the domain names showing that it has no rights or legitimate interests in the domain names and that it registered and used the domain names 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 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 owns registrations with the United States Patent and Trademark Office (“USPTO”) for the following trademarks: bluehost (Reg. No. 3,417,116, registered Apr. 29, 2008), HostGator (Reg. No. 3,193,860, registered Jan. 2, 2007), and JUST HOST (Reg. No. 4,073,374, registered Dec. 20, 2011). The bluehost and HostGator marks are used in connection with the sale of computer services, mainly managing websites for third parties, and the JUST HOST mark is used to provide e-mail services and multiple-user access to a global computer information network. The Panel finds that registration of a mark with the USPTO is sufficient to establish rights in a trademark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
It will be noticed that the bluehost domain names were all registered after the blue host trademark was registered, namely on April 29, 2008.
However, many of the other domain names were registered prior to the registration of the corresponding trademarks and, although that fact does not have an impact of this, the first element for consideration, it is relevant for later consideration under the other two elements. In that regard, it is noted that the JUST HOST domain names were all registered prior to the registration of the JUST HOST trademark on December 20, 2011 and that several of the hostgator domain names were registered prior to the registration of the HostGator trademark on January 2, 2007. Specifically, the <jsthost.com>, <jsuthost.com>, <justhst.com>, <justohst.com>, <justost.com>, <juthost.com>, <usthost.com>, and <wwwjusthost.com> domain names predate the date on which Complainant acquired rights in the JUST HOST trademark and the <hostgators.com>, <hosgator.com>, <hostagtor.com>, <hostgatorr.com>, <hosstgator.com>, <hoatgator.com> and <hotgator.com> domain names predate the HostGator trademark.
It is therefore relevant to consider if Complainant had common law or unregistered trademarks rights in the JUST HOST and HostGator marks prior to the registration of those domain names. Complainant did not address specific arguments on this issue, but the Panel is able to reach its own conclusions from the evidence.
In order to acquire common law rights in a mark, a complainant must show that the mark has acquired secondary meaning showing that it identifies the goods and services of complainant. To establish secondary meaning, a complainant must show that the mark has been used in commerce. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). The evidence is that Complainant has used its mark in the oil and gas industry since 1997. Complainant has also used its mark in the real estate industry since 2004. Moreover, Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). The evidence is that Complainant has used the JUST HOST mark in commerce since July 2008 and hence prior to the registration of all of the JUST HOST domain names and that Complainant has used the HostGator mark in commerce since October 22, 2002 and hence prior to the registration of all of the hostgator domain names. As the Panel so finds, it therefore finds that Complainant acquired common law trademark rights in the JUST HOST and HostGator trademarks prior to the registration of the disputed domain names.
The second issue that arises is whether the disputed domain names are identical or confusingly similar to one or more of Complainant’s trademarks. Complainant argues that the domain names now in dispute are confusingly similar to one of the three aforementioned trademarks. For the sake of clarity, each respective trademark will be addressed in separate paragraphs below.
As for the bluehost trademark, Complainant argues that the bluehost domain names are confusingly similar to the trademark. Complainant notes that all of the domain names contain the entire mark and differ only by the removal and/or addition of a single letter, on top of the generic top-level domain (“gTLD”) “.com”. Complainant further argues that such alterations amount to typosquatting. As a general rule, “.com” is not capable of distinguishing a domain name from the trademark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Prior panels presented with similar scenarios have found that such changes result in a confusing similarity (see OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”)), and can also amount to typosquatting (see Internet Movie Database, Inc. v. Temme, FA 449837 (Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark). The Panel agrees with Complainant’s submissions and finds that the bluehost domain names are confusingly similar to the bluehost mark.
As for the HostGator trademark, Complainant submits that the hostgator domain names are confusingly similar to the trademark. Complainant submits that all of the domain names contain the entire mark and differ only by the removal and/or addition of a single letter, on top of the generic top-level domain (“gTLD”) “.com”. Complainant further argues that such alterations amount to typosquatting. As a general rule, “.com” is not capable of distinguishing a domain name from the trademark at issue. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Prior panels presented with similar scenarios have found that such changes result in a finding of confusing similarity (see Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.), and can also amount to typosquatting (see Marriott Int'l, Inc. v. Seocho, FA 149187 (Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark)). Thus, the Panel finds that the hostgator domain names are confusingly similar to the HostGator mark.
As for the JUST HOST mark, Complainant argues that the just host domain names are confusingly similar to the trademark. Complainant notes that all of the domain names contain the entire mark and differ only by the removal and/or addition of a single letter, on top of the generic top-level domain (“gTLD”) “.com”. Complainant further argues that such alterations amount to typosquatting. As a general rule, “.com” is not capable of distinguishing a domain name from the trademark at issue. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Prior panels presented with similar scenarios have found that such changes result in a confusing similarity (see Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”)), and can also amount to typosquatting (see Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant)). Also, panels have found that domain names beginning with “www” result in a finding of confusing similarity. See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark). Therefore, the Panel finds that the just host domain names are confusingly similar to the JUST HOST mark.
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 names 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 bluehost, HostGator and JUST HOST marks and to use them in its domain names with the minor amendments particularized above which do not detract from the confusing similarity that is clearly present but suggest that the domain names are referring to Complainant and its goods and services;
(b) Respondent registered the disputed domain names on various dates particularized above;
(c) The domain names have been used in the manner particularized above;
(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;
(e) Complainant submits that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow it to use Complainant’s marks in domain names. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests in the domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Accordingly, the Panel finds that Respondent is not commonly known as the disputed domain names;
(f) Complainant argues that Respondent’s use of the disputed domain names fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that some of the domain names are used to direct Internet users to a webpage containing competing hyperlinks. The Panel notes Complainant’s attached Exhibit H, which provides support for Complainant’s argument. Prior panels evaluating similar conduct have declined to find respondent rights or legitimate interests. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Accordingly, as the Panel agrees with Complainant’s submission, it finds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and therefore declines to recognize such rights under Policy ¶ 4(c)(i) and (iii);
(g) Complainant also argues that the <bljehost.com>, <bluehosg.com>, <bluehoxt.com>, <bouehost.com>, <hoatgator.com>, <hosgator.com>, <hosstgator.com>, <hostagtor.com>, <hostgataor.com>, <hostgatod.com>, <hostgatof.com>, <hostgatorr.com>, <hostgators.com>, and <hotgator.com> domain names are used to redirect Internet users to Complainant’s own website, an act that Complainant further argues violates the affiliate agreement Respondent entered into with Complainant. The Panel notes Complainant’s attached Exhibit H which is a screenshot of the resolving webpage, and Exhibit M which is a copy of the affiliate agreement. Prior panels evaluating such conduct have declined to recognize respondent rights and legitimate interests. See Deluxe Corp. v. Dallas Internet, FA 105216 (Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Thus, as the Panel agrees with Complainant’s submission, it declines to recognize any such rights or legitimate interests in the Respondent;
(h) The Panel also finds that there is nothing in the evidence to show that Respondent has, on any other ground, either under the Policy or otherwise, a right or legitimate interest in any of the disputed domain names.
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by attempting to sell the domain names to the public. The Panel notes Complainant’s attached Exhibit I, which Complainant claims supports its bad faith offer to sell argument. Prior panels have found that an offer to sell a domain name to the public can constitute bad faith, if the asking price exceeds the out-of-pocket costs required to create the domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). As the Panel finds that such is the case here, it finds bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Complainant submits that its business is being disrupted because some of the domain names redirect to a webpage that displays competing hyperlinks. The Panel again notes Complainant’s attached Exhibit H which is a screenshot of the resolving web pages. In the past, use of a domain name to display competing hyperlinks has been found to constitute bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (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, as the Panel agrees with Complainant’s submission, it finds that Complainant has established Policy ¶ 4(b)(iii) bad faith.
Thirdly, Complainant submits that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. To support this submission Complainant argues that some of the domain names redirect Internet users to a webpage displaying competing hyperlinks. Again, the Panel notes Complainant’s attached Exhibit H which is a screenshot of the resolving webpage. This type of conduct has in the past been found to consist of Policy ¶ 4(b)(iv) bad faith. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Accordingly, as the Panel agrees with Complainant’s submission, it too finds bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in its marks. Complainant argues that Respondent's display of competing hyperlinks at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's marks and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fifthly, Complainant argues that Respondent’s registration of the disputed domain names amounts to bad faith typosquatting. Complainant argues that all of the domain names differ from the respective trademark by a single character, thus evidencing Respondent’s attempt at taking advantage of Internet users who commit typos. Prior panels have found such behavior to amount to bad faith. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Thus, the Panel finds that Respondent has engaged in typosquatting and hence bad faith.
Sixthly, Complainant argues that some of the domain names redirect to Complainant’s own website in violation of the affiliate agreement. The Panel again notes Complainant’s attached Exhibit H which is a screenshot of the resolving webpage, and Exhibit M which is a copy of the affiliate agreement. Prior panels evaluating such conduct have found that it shows bad faith and the Panel so finds on the evidence in the present case. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also LifeLock v. Sparta Trading S.A., FA1408001577367 (Forum Oct. 14, 2014) (“Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, which is a violation of its affiliate agreement with Complainant. Therefore, Respondent is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”).
Finally, 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 names using Complainant’s marks and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them 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 <bljehost.com>, <bluehosg.com>, <bluehoxt.com>, <bouehost.com>, <hoatgator.com>, <hosgator.com>, <hosstgator.com>, <hostagtor.com>, <hostgataor.com>, <hostgatod.com>, <hostgatof.com>, <hostgatorr.com>, <hostgators.com>, <hotgator.com>, <jsthost.com>, <jsuthost.com>, <justhst.com>, <justohst.com>, <justost.com>, <juthost.com>, <usthost.com>, <wwwjusthost.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 25, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page