Wendy Murdoch / Wendy Murdoch, LLC v. Debbie Romero / The effortless Rider
Claim Number: FA1612001706433
Complainant is Wendy Murdoch / Wendy Murdoch, LLC (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Debbie Romero / The effortless Rider (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <effortlessrider.com>, registered with GoDaddy.com, LLC.
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 December 8, 2016; the Forum received payment on December 8, 2016.
On December 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <effortlessrider.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 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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@effortlessrider.com. Also on December 9, 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 9, 2017, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
A. Complainant and its Products and Services
1. Wendy Murdoch is an internationally recognized equestrian instructor and clinician with over thirty years of experience. In 1984, while attaining her master’s degree in equine reproductive physiology, she suffered a severe riding accident. Her self-rehabilitation started a lifelong pursuit of learning how to ride pain free, using the body as it was designed to be used.
2. Ms. Murdoch is an innovator in horseback riding instruction. In addition to authoring several books and DVDs, and creating the Ride Like a Natural and SURE FOOT Equine Stability Programs, she has studied extensively outside the equine world in order to incorporate these teachings into her instruction.
3. In 2001, Ms. Murdoch began her studies of The Feldenkrais Method.. The Feldenkrais Method is a body/mind awareness and movement program that teaches both the subtle connection between human thought and physical movement, as well as how every day activities can be accomplished with efficiency and ease. In 2003, she became a Certified Feldenkrais Method Awareness Through Movement® Teacher.
4. At least as early as 2004, Ms. Murdoch developed and began offering horseback riding theory courses called “The Effortless Rider” that combine her equestrian knowledge with her understanding of biomechanics acquired through her extensive Feldenkrais Method training. The term “Effortless Rider” is derived from a quote by the founder of The Feldenkrais Method: “Make the impossible possible, the possible easy, and the easy effortless.”
5. In addition to offering Effortless Rider classes since at least 2004, in 2006, Ms. Murdoch collected a series of articles that she wrote for Eclectic Horseman Magazine that discuss The Feldenkrais Method for horseback riders, and published them together in a book titled, “The Effortless Rider.” Complainant promotes her Effortless Rider services through sales of this book on Amazon and on her own website at www.murdochmethod.com.
6. Since at least as early as 2004, Complainant has advertised her Effortless Rider classes at the website <murdochmethod.com>. Any time Complainant refers to the Effortless Rider classes in promotional material or online, Complainant provides notice of her trademark rights by including the “®” symbol next to the EFFORTLESS RIDER Mark.
7. Additionally, Complainant maintains a Facebook page where she advertises her Effortless Rider classes. This Facebook page is followed by over 5,200 people. See id. Ms. Murdoch is also a regular speaker/presenter/clinician at equine events around the country, where she promotes her various horseback riding services, including her Effortless Rider services.
a) Complainant’s Trademark Holdings
8. Complainant owns the following U.S. trademark registration for the EFFORTLESS RIDER Mark:
i. U.S. Trademark Reg. No. 3,074,373 for the mark EFFORTLESS RIDER, filed Nov. 24, 2003; issued Mar. 28, 2006; covering products in International Class 41 (“Educational courses for horseback riders”) (asserting a first-use date of June 12, 2003).
b) Respondent’s Infringing Activities
9. Respondent registered the Domain Name on September 3, 2014. Therefore Complainant’s trademark rights in the EFFORTLESS RIDER Mark, based on her trademark registration and on her common-law rights acquired through use of the EFFORTLESS RIDER Mark, predate Respondent’s registration by at least a decade.
10. Respondent uses the Domain Name to redirect users away from Complainant’s website to a website that offers services almost identical to Complainant’s business. Specifically, Respondent offers horseback riding lessons based on a body/mind awareness and movement system called the Alexander Technique. Respondent’s website displays the EFFORTLESS RIDER Mark prominently at the top of every page on her website. By falsely representing herself as affiliated with Complainant through the use of the Domain Name and website, Respondent attempts to capitalize on the substantial goodwill Complainant has established in the EFFORTLESS RIDER Mark in order to deceive consumers into frequenting her website for her own commercial benefit.
11. Respondent has no trademark rights in the Domain Name. Respondent also is not, and has never been, known by the Domain Name. Although the WHOIS record for the Domain Name lists the “Registrant Organization” as “The effortless Rider,” nothing in the record indicates that Respondent was known by that name prior to registration of the Domain Name. Respondent also appears to have registered the business name “Effortless Rider, LLC on September 24, 2014; the fact that this registration occurred after the Domain Name was registered further suggests Respondent was not known as “Effortless Rider” prior to registering the Domain Name.
12. Respondent operates her business primarily in Warrenton, Virginia, and the WHOIS record for the Domain Name lists Respondent’s address as located in Rixeyville, Virginia. Complainant operates her business out of Washington, Virginia. Whether located in Warrenton or Rixeyville, Virginia, Respondent operates her business roughly only 20 miles from Complainant’s business. Further, Complainant’s records indicate that a “Debra Romero” was added to her contact list in 2004—the year Complainant introduced the “Effortless Rider” program. Respondent has also indicated in phone conversations that she has worked with Complainant in the past. Given this and their close geographic proximity, and because Respondent did not register the domain name until almost a decade after Complainant had begun using the EFFORTLESS RIDER Mark, it is inconceivable that Respondent did not know of Complainant’s rights in the EFFORTLESS RIDER Mark when registering the Domain Name.
13. When Complainant learned of Respondent’s use of the EFFORTLESS RIDER Mark in a domain name and associated website, on September 12, 2016, Complainant sent Respondent a demand letter notifying Respondent that consumers would be misled into believing Respondent’s business was in some way sponsored or approved by, or associated with Complainant’s. Complainant also noted that Complainant’s and Respondent’s shared presence in Virginia increases the likelihood of confusion. Complainant sent a follow-up letter to Respondent on October 4, 2016. On November 28, 2016, Complainant sent a letter to Respondent’s attorney noting the lack of response to Complainant’s earlier letters. To date, Complainant has received no response to any of its letters.
I. LEGAL GROUNDS
A. The Domain Name is Confusingly Similar to Complainant’s EFFORTLESS RIDER Mark
14. The domain name <effortlessrider.com> is confusingly similar to Complainant’s EFFORTLESS RIDER Mark because it is identical to Complainant’s EFFORTLESS RIDER Mark, only removing the space between the words “effortless” and “rider,” and adding the non- distinguishing gTLD “.com.” Such changes are insufficient to distinguish the Domain Name from Complainant’s EFFORTLESS RIDER Mark. UDRP panels have consistently held that removing spaces and adding gTLDs in a domain name are inconsequential when conducting an analysis of confusing similarity. See, e.g., Sunbelt Rentals, Inc. v. VistaPrint Technologies Ltd., Case No. FA1601001656560 (Forum Feb. 24, 2016) (“Past panels have found that removing spaces and adding gTLDs or ccTLDs are irrelevant changes for the purposes of Policy ¶4(a)(i).”); 1-800-Pack-Rat, LLC and Pack-Rat Portable Mini-Storage, LLC v. Salvatore Scafidi and PackRat Moving & Storage Inc., Case No. FA1008001343944 (Forum Oct. 14, 2010) (“It has also been shown that the mere deletion of a space or the addition of a gTLD do nothing to differentiate a domain name from the mark in question because you cannot have a space in a domain name and a gTLD is required.”); 1-800-Pack-Rat, LLC and Pack-Rat Portable Mini- Storage, LLC v. Pack Rat Moving Company c/o Zachary Bradley, Case No. FA1003001312052 (Forum Apr. 23, 2010) (“The Panel also finds that a deleted space and the added gTLD ‘.com’ are irrelevant in determining confusing similarity according to Policy ¶4(a)(i).”); Am. Int’l Group, Inc. v. Domain Admin. Ltd., Case No. FA0711001106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
B. Respondent Has No Rights Or Legitimate Interest In The Domain Name
15. Respondent has no rights or legitimate interest in the Domain Name for the following reasons.
16. First, Respondent has chosen a domain name that is identical to Complainant’s EFFORTLESS RIDER Mark to redirect users to her website for services that directly compete with those offered by Complainant for Respondent’s own commercial gain. Numerous Panel decisions have held that such use of a domain name does not constitute a bona fide offering of goods or services, and does not constitute fair use under the UDRP. See, e.g., VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ, Case No. FA1607001683085 (Forum Aug. 17, 2016) (“The domain name resolves to an active website prominently displaying the VISAHQ mark (with a space inserted), and offering services almost identical to those offered by Complainant. Such a competitive use by a respondent is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”; Institute for Human Rights and Business, Ltd. v. Eustace Onuegbu, Case No. FA1509001639399 (Forum Nov. 9, 2015) (“[T]he Panel finds that the use by Respondent of the Domain Name in competition with Complainant for funds, with knowledge of Complainant and its IHRB mark and of the Domain Name’s confusing similarity to Complainant’s mark is not a bona fide offering of goods or services under Policy ¶4(c)(i). Further, that such use is not a legitimate non-commercial or fair use of the Domain Name under Policy ¶4(c)(iii).”); Majid Hajizadeh Bashy v. Maryam Kaveh, Case No. FA1507001628851 (Forum Aug. 28, 2015) (“Complainant claims that Respondent is not using the <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names, but to offer medical services, including vein therapy and treatment services, for commercial gain and in direct competition with the services offered by Complainant and under Complainant’s trademark. Use of a confusingly similar domain name to offer competing services is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”); Avaya Inc. v. Holdcom, Case No. FA0806001210545 (Forum Aug. 19, 2008) (use of a domain name that is confusingly similar to complainant’s mark to redirect Internet users to a competing business is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); Morgan Stanley v. Albert Jackson, Case No. FA0403000244092 (Forum Apr. 19, 2004) (“Respondent has registered a domain name, which is confusingly similar to Complainant’s MORGAN STANLEY DEAN WITTER mark, to host a website that offers services that compete with those offered by Complainant under its mark. Such use has consistently been found not to be a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor is such use a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); Samsonite Corporation v. Scholarcraft Commercial Furniture, Case No. FA0404000250235 (Forum May 21, 2004) (“Respondent and Complainant both sell furniture and the Panel is permitted to presume that Respondent is a competitor of Complainant and that Respondent incorporated its competitor’s trademark, namely SAMSONITE, to market Respondent’s competing goods. Such use is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
17. Second, Respondent is not, and has never been, commonly known by the Domain Name, and Complainant has not authorized Respondent to use the EFFORTLESS RIDER Mark. UDRP panels have held that to find a respondent has been commonly known by a domain name requires a showing that the respondent was known by the domain name prior to the domain name’s registration. See Institute for Human Rights and Business, Ltd. v. Eustace Onuegbu, Case No. FA1509001639399 (Forum Nov. 9, 2015) (finding no rights or legitimate interests in the domain name where “Respondent says it is registered in Gambia and has been in operation for less than one year. There is no evidence under Policy ¶4(c)(ii) that, prior to the registration of the Domain Name, Respondent was commonly known by the Domain Name.”), accord Yahoo! Inc. v. Yahhoo, Case No. FA0804001175543 (Forum May 26, 2008) (“[B]ased on the undisputed evidence, Respondent lacks common law rights in the <yahhoo.com> domain name even if its WHOIS contact information is “YAHHOO.COM” because there is no affirmative evidence that Respondent was commonly known by the disputed domain name before its registration.”); Yoga Works, Inc. v. Arpita, Case No. FA0304000155461 (Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); RMO, Inc. v. Burbridge, Case No. FA0103000096949 (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”). Nothing in the record indicates that Respondent was commonly known by the Domain Name prior to registration. The WHOIS record for the Domain Name, which was registered on September 3, 2014, lists the “Registrant Organization” as “The effortless Rider.” On September 24, 2014, Respondent appears to have registered the company name Effortless Rider, LLC in Virginia. The WHOIS record is insufficient to show Respondent was commonly known by the Domain Name on September 3, 2014; the Virginia business registration actually confirms Respondent was not known by the Domain Name prior to the Domain Name’s registration because that registration took place after the Domain Name was registered. See President and Fellows of Harvard College v. Halil CIL / Union of Brands, Case No. FA1511001645647 (Forum Dec. 18, 2015) (“Included in the Response is a copy of the Certificate of Incorporation of a UK company by the name of Harvard Publishers UK Ltd. Respondent is the sole director and shareholder. Panel observes, first, that of and by itself, that document does not show use of any name, still less that Respondent might be commonly known by that name . . . .”); Giant Eagle, Inc. v. Giant Eagle/Giant Eagle Inc., Case No. FA1410001586562 (Forum Dec. 6, 2014) (“The WHOIS information lists ‘Giant Eagle’ of ‘Giant Eagle Inc’ as the registrant. Nevertheless, there is no evidence of any outside association between Respondent and the ‘Giant Eagle Inc’ name beyond Respondent’s own self-serving association. Accordingly, the Panel holds that Respondent is not commonly known by the gianteagleinc.com> [sic] name pursuant to Policy ¶4(c)(ii).”). Moreover, given Complainant’s long-standing use of the EFFORTLESS RIDER Mark in Virginia, Respondent’s corporate registration was likely a sham to give the appearance of legitimacy to Respondent’s abusive registration and use of the Domain Name. See Google Inc. v. GOOGLESERVICES, Case No. FA1105001391118 (Forum July 6, 2011) (“This Panel is satisfied that on the balance of probabilities Respondent’s company GOOGLE SERVICES LIMITED never traded and was registered as a sham in an endeavor to give the registration of the two domain names some legitimacy. Based on the evidence before this Panel Complainant had already established a reputation and goodwill in the GOOGLE mark when Respondent registered the disputed domain name and the eponymous United Kingdom registered company.”); Exxon Mobil Corporation v. newatlas / newatlas c/o salah elsokary / c/o EXXONMOBIL-EMIRATES.NET, Case No. FA1108001401904 (Forum Aug. 18, 2011) (“Respondent’s [corporate registrations] are insufficient to demonstrate that Respondent is commonly known by the domain name under Paragraph 4(c)(ii), and it appears to the Panel that Respondent adopted its name solely for the purpose of falsely passing itself off as being associated with Complainant.”).
18. Third, Respondent has failed to respond to any of Complainant’s demand letters. UDRP panels have held that a respondent’s failure to respond to demand letters is evidence that the respondent lacks rights and legitimate interests in a domain name. See, e.g., State Farm Mutual Automobile Insurance Company v. Amanda Jenkins, Case No. FA1611001701128 (Forum Dec. 1, 2016) (“Previous panels have held that a respondent’s failure to respond to a complainant’s demand letter(s) is evidence that the respondent lacks rights and legitimate interests in a domain name.”); Compagnie Générale des Etablissements Michelin v. Bluepoint Global, Case No. D2015-1644 (WIPO Nov. 4, 2015) (“[T]he Panel finds that the Respondent's lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that the Respondent never answered to the Complainant’s cease and desist letters and filed no response. According to previous UDRP decisions ‘non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights’”) (citing cases).
19. Finally, Respondent cannot argue that its use of “EFFORTLESS RIDER” constitutes fair use. First, Complainant’s EFFORTLESS RIDER mark is an inherently distinctive, immediately protectable mark. Second, Complainant’s EFFORTLESS RIDER Mark has acquired marketplace distinctiveness through over a decade of substantial commercial success and promotion. Complainant is not seeking to prevent Respondent’s non-trademark uses of the terms “rider” and “effortless” to describe her horseback riding services, but rather Respondent’s blatant copying of the entirety of the EFFORTLESS RIDER brand for commercial gain. Respondent’s use of the EFFORTLESS RIDER Mark in a domain name, on a website, and as a company name, as well as Respondent’s location in the same geographic region as Complainant, shows that Respondent seeks to capitalize on the goodwill and name of Complainant. See Woodbury Optical Studio, Inc. v. theeverythingbagel, Case No. FA1202001428064 (Forum Mar. 13, 2012) (“The disputed domain name [<woodburyoptical.com>] resolves to the website of a local optical services provider that competes directly with Complainant’s business. The geographic proximity increases the likelihood that Respondent registered the disputed domain name to divert customers to Complainant’s competitor. Therefore, the Panel finds that Respondent makes neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.”); Metropolitan Life Ins. Co. v. Interpress Inc., Case No. FA1109001409082 (Nov. 22, 2011) (“[T]he Panel believes that Respondent is using the disputed domain name to unfairly trade on Complainant’s METROPOITAN [sic] mark rather than to provide goods or services related to the plain meaning of the name’s descriptive terms. Thus, the Panel finds that Respondent’s use of the disputed domain name, which furnishes links to the websites of Complainant’s competitors, is not ‘a bona fide offering of goods or services’ per Policy paragraph 4(c)(i).”); Gibson, LLC v. Jeanette Valencia, Case No. D2010-0490 (WIPO May 22, 2010) (“Respondent claims that the term ‘Modern Cowgirl’ is a descriptive term and therefore that she has a legitimate interest in using this descriptive term for her website. Although that assertion might be accurate with respect to a website that blogs about modern cowgirls, it is not true with respect to the portion of the site that advertised the sale of goods under a name that infringes Complainant’s registered trademark. A trademarked descriptive term may be used for its descriptive value, but it is not legitimate to use the term ‘because of its value as a trademark.’”).
C. Respondent’s Registration and Use of the Domain Name in Bad Faith
20. Respondent’s registration and use of the Domain Name squarely meet the grounds of bad faith outlined in UDRP Section 4(b), as well as additional grounds of bad faith defined in previous UDRP decisions.
21. First, Respondent’s registration and use of the Domain Name meet the bad-faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent intentionally selected, registered, and is using the Domain Name to attract internet users to its website for commercial gain by engendering confusion and mistake with Complainant and its EFFORTLESS RIDER Mark as to the source, sponsorship, affiliation, connection, and/or endorsement of Respondent’s services. Respondent’s website increases the confusion by displaying the EFFORTLESS RIDER Mark prominently on its website. Further, Respondent exploits the confusion with Complainant’s Mark to offer services that directly compete with Complainant’s. UDRP Panels have consistently held that such activities constitute bad faith. See VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ, Case No. FA1607001683085 (Forum Aug. 17, 2016) (“Respondent has engaged in bad faith registration and use under Policy ¶4(b)(iv) because it directly competes with Complainant. Respondent obviously makes a profit from the competing services, therefore constituting bad faith attraction for commercial gain under Policy ¶4(b)(iv).”); H-D Michigan LLC v. Nathan Bingham, Case No. FA0902001248203 (Forum Apr. 8, 2009) (“In this case, Respondent’s registration and use of the Domain Name meets the bad-faith element set forth in Section 4(b)(iv) of the Policy. Specifically, Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant and its HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website, and the competing motorcycle rental services advertised on Respondent’s website.”); see also Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba Case No. D2004-0941 (WIPO Dec. 28, 2004) (“The [r]espondent’s use of the disputed domain name has all the hallmarks of bad faith. The incorporation of the trademark in the domain name, the use of the mark on the website and the website layout similar to Toshiba’s authorized websites, the use of the business name, are together calculated to create confusion or deception as to the existence of some connection by way of sponsorship, endorsement, sanction or control between the Complainant and the website to which the disputed domain name resolves (see Paragraph 4(b)(iv) of the Policy)”); MathForum.com, LLC v. Weiguang Huang, Case No. D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
22. Second, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent has disrupted Complainant’s business by using the Domain Name for a website that offers services that compete with Complainant. See VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ, Case No. FA1607001683085 (Forum Aug. 17, 2016) (“A respondent’s use of a domain to promote directly competing services constitutes bad faith registration and use under Policy ¶4(b)(iii).”); Vanguard Trademark Holdings USA LLC v. Warren Lee Adams, Case No. FA1604001671754 (Forum May 25, 2016) (“Complainant argues that Respondent’s registration and use of the <drivehappymotors.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶4(b)(iii) because Respondent is using the domain name to offer services that compete with Complainant. Panels have found a respondent’s diversion of a complainant’s customers to its competing business to constitute bad faith disruption under Policy ¶4(b)(iii).”); ABS-CBN Int’l v. Daryl Untalan, Case No. FA1604001671368 (Forum May 23, 2016) (“Respondent is acting as a competitor of Complainant because Respondent is replaying Complainant’s video content without authorization. Respondent’s use of Complainant’s TFC mark diverts Complainant’s customers to Respondent’s competing website in bad faith under Policy ¶4(b)(iii).”); OneWest Bank, N.A. v. Matthew Foglia, Case No. FA1503001611449 (Forum Apr. 26, 2015) (“Respondent uses the at-issue domain name to direct Internet users to a website which competes with Complainant. Using the domain name in this manner disrupts Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iii).”).
23. Third, Respondent has failed to respond to any of Complainant’s demand letters. UDRP panels have held that a respondent’s failure to respond to demand letters is evidence of bad faith. See, e.g., State Farm Mutual Automobile Insurance Company v. Amanda Jenkins, Case No. FA1611001701128 (Forum Dec. 1, 2016) (“Prior panels have held that a respondent’s failure to respond to a complainant’s demand letter(s) is evidence of bad faith.”); Viking Range, LLC v. Serena Keltner / Seren Keltner / Appliance Repair 247, Case No. FA1610001698948 (Forum Nov. 28, 2016) (“Panels have held that a respondent’s failure to respond to a complainant’s cease and desist correspondence constitutes bad faith registration and use.”); JDC Healthcare Management, Inc., d/b/a Jefferson Dental Clinics v. Online Admin / DotBadger Domains, Case No. FA1609001694712 (Forum Oct. 27, 2016) (same); Watts Water Technologies Inc. v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), Case No. FA1606001681402 (Forum Aug. 17, 2016) (same).
24. Finally, in light of: (1) Complainant’s federal trademark registration; (2) Complainant’s long-standing use of the EFFORTLESS RIDER Mark; (3) the fact that the Domain Name is identical to Complainant’s EFFORTLESS RIDER Mark; (4) the fact that Respondent and Complainant operate their businesses within approximately twenty miles of each other; and (5) the fact that Respondent has created a website offering services that compete with Complainant’s services, Respondent undoubtedly knew of Complainant’s rights in the EFFORTLESS RIDER Mark prior to registering the Domain Name. By registering the Domain Name with knowledge of Complainant’s rights in the EFFORTLESS RIDER Mark, Respondent acted in bad faith. See Illumina, Inc. v. Melanie Taylor, Case No. FA1609001693464 (Forum Oct. 12, 2016) (“Finally, given Complainant’s federal registrations of its ILLUMINA Marks, the fame of Complainant’s ILLUMINA Marks, Complainant’s long-standing use of the ILLUMINA Marks, and the fact that the Domain Name comprises a confusingly similar version of Complainant’s ILLUMINA Marks, Respondent undoubtedly knew of Complainant’s rights in the ILLUMINA Marks prior to registering the Domain Name. By registering the Domain Name with knowledge of Complainant’s rights in the ILLUMINA Marks, Respondent acted in bad faith.”); Church Mutual Ins. Co. v. Paul Looney, Case No. FA1603001668317 (Forum May 17, 2016) (“Due to: (1) Complainant’s federal registrations (2) fame of the CHURCH MUTUAL mark (3) Complainant’s use of the mark (4) the domain name being confusingly similar to the CHURCH MUTUAL mark, and (5) Respondent impersonating Complainant through the disputed domain name, Respondent had actual knowledge of Complainant’s rights in the mark when Respondent registered the disputed domain name. Therefore, Respondent registered the <churchrnutual.com> domain name in bad faith under Policy ¶4(a)(iii).”); Majid Hajizadeh Bashy v. Maryam Kaveh, Case No. FA1507001628851 (Forum Aug. 28, 2015) (“Complainant states that both its and Respondent’s medical offices are in Las Vegas, Nevada, and are located only 7.7 miles from each other. In fact, Complainant and Respondent have known each other on a personal/social and professional level since 2003. While constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the proximity of Complainant’s and Respondent’s businesses, and the long professional and personal knowledge and co-operation, Respondent had actual knowledge of the trademark and Complainant’s rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii).”); ALLGEN Power Services, LLC d/b/a Allied Generators v. Matthew Anderson, HostingItAll, Case No. D2015-0368 (WIPO Apr. 27, 2015) (Respondent’s website offers almost identical products and services as Complainant and Respondent’s business is physically located approximately 25 miles away from Complainant’s business. It appears that Respondent is using the disputed domain names so as to confuse consumers into believing that Midwest is related to Complainant. Alternatively, Respondent’s use of the disputed domain names appears to be an attempt to divert Internet consumers away from Complainant’s website to Respondent’s website for Respondent’s competing business. In view of the close geographic proximity of Respondent’s business to Complainant’s business, it is likely that Respondent was aware of Complainant’s competing business at the time Respondent registered the disputed domain names in September 2012 and October 2013. Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith.”); Woodbury Optical Studio, Inc. v. theeverythingbagel, Case No. FA1202001428064 (Forum Mar. 13, 2012) (“The disputed domain name [<woodburyoptical.com>] resolves to the website of Complainant’s competitor, which operates just a few miles away from Complainant’s storefront. The website offers optical services that compete directly with Complainant’s service and product offerings. Internet users seeking out eye care in the Hicksville, New York area may be searching for Complainant and arrive at the competitor’s website instead. The Panel finds that this use disrupts Complainant’s business, constituting bad faith registration and use under Policy ¶4(b)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 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.
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 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 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 EFFORTLESS RIDER mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,074,373, registered Mar. 28, 2006). Registration of a mark with a governmental authority (such as the USPTO) is sufficient to demonstrate a registrant’s rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s domain name <effortlessrider.com> is identical to Complainant’s EFFORTLESS RIDER mark. Respondent’s domain name consists of Complainant’s mark in its entirety. Respondent’s domain merely differs through the removal of the space between the two words and adding the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Respondent’s domain name is identical to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name 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 name or authorized to use the EFFORTLESS RIDER mark. WHOIS information associated with the disputed domain name identifies Respondent as “Debbie Romero” of the organization, “the effortless Rider.” In this case, there actually is a Virginia limited liability company known as Effortless Rider, LLC. It is also the Respondent.
In litigation, the court will presume a defaulted defendant admits all of the allegations in the complaint. In arbitrations (including UDRP proceedings), the arbitrator (the Panel in this case) must review the merits of the evidence submitted and not presume Respondent has admitted all of the Complainants’ allegations. While the difference makes no real difference in most cases, it is a significant difference under the facts of this case. Complainant has provided a copy of Respondent’s registration with the Virginia Council for Corporations (as it should have). Respondent was formed on September 24, 2014. The domain name was registered on September 3, 2014. The Panel logically presumes the limited liability company is commonly known by its name (even though that name may well infringe on Complainant’s registered federal trademark). It is not only possible for Respondent (or any other juridical entity) to act through its organizers before it is formally registered with the State of Virginia, but it is common. Respondent seems to be a real business which offers real services. The fact the limited liability company did not exist on the date the domain name was acquired is not outcome determinative in light of business realities and modern limited liability company general formation codes. Therefore, the Panel finds Respondent is commonly known by the at-issue domain name pursuant to Policy ¶4(c)(ii).
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
Complainant claims Respondent registered and uses the domain name for a website offering competing services. That is correct. Respondent attempts to compete and disrupt Complainant’s business as well as create confusion for commercial gain. Panels consistently find a respondent has acted in bad faith under Policy 4(b)(iii) and/or 4(b)(iv) where a respondent uses a confusingly similar domain to offer services that compete with a complainant. See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).”). Respondent has acted in bad faith under Policy ¶4(b)(iii) and ¶4(b)(iv).
Respondent undoubtedly actually knew of Complainant’s rights in the EFFORTLESS RIDER mark at the time of registration because of (i) Complainant’s long-standing use of the mark, (ii) Complainant’s federal trademark registration, (iii) the similarity between the domain name and the mark (actually, they are identical and not merely similar), (iv) both parties operate in the same business, and (v) the fact the parties operate businesses within approximately 20 miles of each other.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <effortlessrider.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 13, 2017
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