Trusted Shops GmbH v. Name Premier / BuyBestDomains.com
Claim Number: FA1612001706409
Complainant is Trusted Shops GmbH (“Complainant”), Germany. Respondent is Name Premier / BuyBestDomains.com (“Respondent”), UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trustedshop.com>, registered with GoDaddy.com, LLC.
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 December 8, 2016; the Forum received payment on December 8, 2016.
On December 8, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <trustedshop.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@trustedshop.com. Also on December 12, 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 January 13, 2017, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Trusted Shops GmbH has rights in the TRUSTED SHOPS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) as well as other trademark agencies around the world (e.g., Reg. No. 2,495,794, registered Oct. 9, 2001). Respondent’s <trustedshop.com> is confusingly similar to the TRUSTED SHOPS mark, differing from the mark only through omission of the letter “s” at the end of the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <trustedshop.com> and Complainant has not entered into any agreement that would provide Respondent with any rights to use the TRUSTED SHOPS mark for any reason. The disputed domain name resolves to a page containing third-party links, some of which link to Complainant’s direct competitors. Such use does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is offering up the domain name for sale, evidence of bad faith per Policy ¶ 4(b)(i). Respondent’s use of the confusingly similar domain to display generic links evinces intent to confuse and attract Internet users for commercial gain, proscribed conduct per Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the disputed domain name was created May 24, 2015.
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 claims rights in the TRUSTED SHOPS mark based upon registration of the mark with the USPTO and other trademark agencies throughout the world (e.g., Reg. No. 2,495,794, registered Oct. 9, 2001). Registration of a mark with the multiple trademark agencies is sufficient to establish rights in that mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel therefore holds that Complainant’s registration of the TRUSTED SHOPS mark with the USPTO and other national agencies is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims Respondent’s <trustedshop.com> is confusingly similar to the TRUSTED SHOPS mark, differing from the mark only by omitting the letter “s” at the end of the mark. Omitting a final letter “s” does not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis of confusing similarity. See Bare Escentuals Beauty, Inc. v. PPA Media Services / Ryan G Foo, FA 1572597 (Forum Sept. 30, 2014) (establishing a confusing similarity between the <baremineral.com> domain name and the BARE MINERALS trademark under Policy ¶ 4(a)(i)). Accordingly, the Panel holds that the disputed domain name is confusingly similar to Complainant’s TRUSTED SHOPS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <trustedshop.com> as it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TRUSTED SHOPS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Name Premier” with “BuyBestDomains.com.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by Respondent’s failure to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <trustedshop.com> redirects to a landing page comprising a list of links dealing with rating systems or seals of approval for online shops. Complainant contends that some of the linked-to third parties compete directly with Complainant. Use of a disputed domain to display links related to a complainant’s business is not permissible use granting rights under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Provide Commerce, Inc. v. e on Craze, FA 1626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). The Panel agrees that Respondent’s use of the disputed domain name does not confer rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent’s use of a confusingly similar domain name to display generic links and links related to Complainant’s business evinces an attempt to confuse and attract Internet users for commercial gain. Such behavior can be evidence of Policy ¶ 4(b)(iv) bad faith. See Staples, Inc. and Staples the Office Superstore, LLC v. HANNA EL HIN / DTAPLES.COM, FA 1557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant has provided evidence that the website resolving from <trustedshop.com> displays links which compete with Complainant’s business. Respondent is presumed to benefit commercially from Internet users clicking the links. The Panel agrees with Complainant and finds Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
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 <trustedshop.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 27, 2017
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