DECISION

 

Securities Investor Protection Corporation v. sara

Claim Number: FA1705001733440

PARTIES

Complainant is Securities Investor Protection Corporation (“Complainant”), represented by Josephine Wang of Securities Investor Protection Corporation, District of Columbia, USA.  Respondent is sara (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sipc.online>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 26, 2017; the Forum received payment on May 26, 2017.

 

On May 27, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <sipc.online> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@sipc.online.  Also on June 2, 2017, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, a non-profit, membership corporation that administers a quasi-public fund to provide relief to customers of failed securities broker-dealers, registered its SIPC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,081,146, registered July 22, 1997), and has rights in the mark under Policy ¶ 4(a)(i). Wang Aff. p. 2, ¶7 . Respondent’s <sipc.online> domain name is identical or confusingly similar to Complainant’s SIPC mark because it merely appends the generic top-level domain (“gTLD”) “.online” to the fully incorporated mark.

2.    Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its SIPC mark in any fashion and Respondent is not commonly known by the disputed domain name. Larosa Aff. 5 (WHOIS information). Further, Respondent has used the domain name to resolve to a webpage that mimics the design and content displayed on Complainant’s <sipc.org> website in an attempt to pass itself off as Complainant. Such use may not be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

3.    Respondent has registered and is using the <sipc.online> domain name in bad faith. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the SIPC mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Respondent’s actual knowledge of Complainant’s rights in the SIPC mark is further evidence of bad faith.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <sipc.online> domain name is confusingly similar to Complainant’s SIPC mark.

2.    Respondent does not have any rights or legitimate interests in the <sipc.online> domain name.

3.    Respondent registered or used the <sipc.online> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant registered its SIPC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,081,146, registered July 22, 1997), and has rights in the mark under Policy ¶ 4(a)(i). A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the SIPC mark under Policy ¶ 4(a)(i).

 

Respondent’s <sipc.online> domain name is identical or confusingly similar to Complainant’s SIPC mark because it merely appends the generic top-level domain (“gTLD”) “.online” to the fully incorporated mark. The addition of a gTLD is considered irrelevant when distinguishing between a mark and disputed domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel holds that Respondent’s <sipc.online> domain name is identical or confusingly similar to Complainant’s SIPC mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its SIPC mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel notes that the <sipc.online> WHOIS information of record lists “SARA” as the registrant. Therefore, the Panel holds that Respondent is not commonly known by <sipc.online>.

 

Next, Complainant contends Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is attempting to pass itself off as Complainant on the resolving website. Such use cannot be construed as bona fide offerings of goods or services or legitimate noncommercial or fair use of a domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Here, Complainant has provided screenshots of Respondent’s website which displays an outdated version of Complainant’s website. LaRosa Aff., pp. 10–20. Therefore, the Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent is disrupting its business by attempting to divert potential customers away from Complainant by offering a website virtually identical to Complainant’s website. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Complainant has provided screenshot evidence of Respondent’s resolving webpage which displays outdated content regarding Complainant’s business. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).

 

Respondent has registered and is using the <sipc.online> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the SIPC mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant has provided screenshot evidence of <sipc.online> displaying an old, outdated version of Complainant’s website. LaRosa Aff., p. 10. Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).

 

Finally, Complainant also contends that in light of the fame and notoriety of Complainant’s YAHOO! mark, it is inconceivable that Respondent could have registered the <sipc.online> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").

 

However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s SIPC mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1997. Wang Aff., p. 11. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <sipc.online> was registered and subsequently used.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sipc.online> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                                                                                                                                John J. Upchurch, Panelist

                                                                        Dated:  July 10, 2017