T-Mobile USA, Inc. dba MetroPCS v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1808001801535
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com>, <tmetropcs.com>, <metropcspayonline.com>, <metropcspcs.com>, <metropcstrainng.com>, <metropcsvip.com>, and <metrovipmetropcs.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2018; the Forum received payment on August 15, 2018.
On August 17, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com>, <tmetropcs.com>, <metropcspayonline.com>, <metropcspcs.com>, <metropcstrainng.com>, <metropcsvip.com>, and <metrovipmetropcs.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2018 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@ametropcs.com, postmaster@gmetropcs.com, postmaster@nmetropcs.com, postmaster@tmetropcs.com, postmaster@metropcspayonline.com, postmaster@metropcspcs.com, postmaster@metropcstrainng.com, postmaster@metropcsvip.com, and postmaster@metrovipmetropcs.com.
Also on August 21, 2018, 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 September 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, T-Mobile USA. dba MetroPCS, is a national provider of mobile communications services with a network reaching more than 300 million people throughout the United States. Complainant has rights in the METROPCS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,803,097 registered Jan. 6, 2004). See Amend. Compl. Ex. C. Respondent’s <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com>, <tmetropcs.com>, <metropcspayonline.com>, <metropcspcs.com>, <metropcstrainng.com>, <metropcsvip.com>, and <metrovipmetropcs.com> domain names are confusingly similar to Complainant’s mark. All of the disputed domain names contain the mark in its entirety. The <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com> and <tmetropcs.com> disputed domain names add a single letter in front of the mark and the “.com” generic top-level domain. (“gTLD”). The <metropcspayonline.com>, <metropcspcs.com>, <metropcstrainng.com>, <metropcsvip.com>, <metrovipmetropcs.com> domain names add the descriptive or generic terms “pay online, “vip,” “metrovip,” “pcs,” or “training,” plus the “.com” gTLD.
ii) Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized by Complainant to use its mark in any way. Additionally, Respondent registered the disputed domain names under a privacy shield. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Respondent attempts to redirect internet users to Complainant’s competitors and unrelated websites to derive click-through revenue. Furthermore, Respondent is offering each of the disputed domain names for sale.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to sell the disputed domain names for more than their out-of-pocket costs. Additionally, Respondent has engaged in a pattern of bad faith registration as Respondent has been the subject of numerous UDRP decisions. Furthermore, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names where it redirects users to unrelated and competing, third party websites. Respondent also used a privacy service to hide its identity prior to these proceedings. Finally, Respondent had actual knowledge of Complainant’s rights prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. The disputed domain names were registered on the following dates.
|
<ametropcs.com> |
June 11, 2018 |
|
<gmetropcs.com> |
April 10, 2018 |
|
<nmetropcs.com> |
May 25, 2018 |
|
<tmetropcs.com> |
April 26, 2018 |
|
<metropcspayonline.com> |
July 6, 2018 |
|
<metropcspcs.com> |
April 10, 2018 |
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<metropcstrainng.com> |
July 30, 2018 |
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<metropcsvip.com> |
May 11, 2018 |
|
<metrovipmetropcs.com> |
May 8, 2018 |
2. Complainant has established rights in the METROPCS mark through its registration with the USPTO (e.g., Reg. No. 2,803,097 registered Jan. 6, 2004).
3. The webpages associated with the disputed domain names show the <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com>, <tmetropcs.com>, <metropcspcs.com>, and <metropcsvip.com> domain names redirect to <Dell.com>. The <metropcspayonline.com> domain name redirects to the <theskinnycelebs.com> domain name and the <metropcstrainng.com> and <metrovipmetropcs.com> domain names redirect to Verizon Wireless.
4. Each of the disputed domain names shows Respondent's offering every one of them for sale.
5. Complainant's METROPCS mark was well renowned and famous at the time Respondent registered the disputed domain names.
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 asserts rights in the METROPCS mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides a copy of its registration of the mark with the USPTO (e.g., Reg. No. 2,803,097 registered Jan. 6, 2004). See Amend. Compl. Ex. C. Therefore, the Panel concludes that Complainant has rights in the METROPCS mark under Policy ¶ 4(a)(i).
Next, Complainant alleges Respondent’s disputed domain names are confusingly similar to Complainant’s mark because Respondent incorporates the entire mark in the disputed domain names, adds a letter before the mark in three of the disputed domain names, adds a generic or descriptive term to four of the disputed domain names, and/or adds a gTLD to the mark in all of the disputed domain names. The addition of a letter or a generic/descriptive term, in combination with a gTLD, to a mark may not be sufficient to distinguish a domain names from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). All of the disputed domain names contain the mark in its entirety. The <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com> and <tmetropcs.com> disputed domain names add a single letter in front of the mark (“a,” “g,” “n,” or “t”) and the “.com” gTLD. The <metropcspayonline.com>, <metropcspcs.com>, <metropcstrainng.com>, <metropcsvip.com>, <metrovipmetropcs.com> domain names add the descriptive or generic terms “pay online, “vip,” “metrovip,” “pcs,” or “trainng,” plus the “.com” gTLD. Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Specifically, Complainant contents Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s mark in any way. Where a response is lacking, relevant WHOIS information may be used to identify the registrant of a disputed domain name See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization from a Complainant to use its marks may be evidence that a Respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides a copy of the WHOIS information which identifies the registrant of the disputed domain name as “Carolina Rodrigues / Fundacion Comercio Electronico,” and no information of the record indicates Respondent was authorized to use Complainant’s mark. Therefore, under a Policy ¶ 4(c)(ii) analysis, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names.
Next, Complainant alleges Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent attempts to commercially gain by redirecting internet users to webpages that compete with Complainant. Use of a domain name to redirect internet users to a competing webpage may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the webpages associated with the disputed domain names which shows the <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com>, <tmetropcs.com>, <metropcspcs.com>, and <metropcsvip.com> domain names redirect to <dell.com>. See Compl. Exs. D, E, F, G, I and K. Furthermore. the <metropcspayonline.com> domain name redirects to the <theskinnycelebs.com> domain name and the <metropcstrainng.com> and <metrovipmetropcs.com> domain names redirect to Verizon Wireless. See Compl. Exs. H, J and L. Therefore, the Panel finds that Complainant’s attempt to commercially gain by redirecting internet users to Complainant’s competitors does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Respondent offers each of the domain names for sale. Attempts to sell a disputed domain name may support a finding that the respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides screenshots of the WHOIS information for each of the disputed domain names which show Respondent offering every one of them for sale. See Compl. Ex. A1. Accordingly, the Panel finds that Respondent is offering the disputed domain names for sale, and therefore lacks rights and legitimate interests.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 alleges that Respondent registered and uses the disputed domain names in bad faith. Specifically, Respondent has listed each of the disputed domain names for sale. Use of a domain name to offer it for sale may be evidence of bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)). Complainant provides copies of the WHOIS information for each disputed domain name which shows Respondent offering each one for sale. See Compl. Ex. A1. Therefore, the Panel concludes that Respondent uses the disputed domain names to offer them for sale.
Further, Complainant contends that Respondent is a known cybersquatter and has a long standing history of cybersquatting. A respondent who has a pattern of cybersquatting may be found to be acting in bad faith in the current domain name disputed under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”). Complainant provides multiple domain name decisions showing “Carolina Rodrigues” as the Respondent, but does not provide any copies of those decisions. Therefore, the Panel concludes that Respondent is a known cybersquatter and therefore registered the disputed domain names in bad faith.
Next, Complainant argues that Respondent attempts to attract for commercial gain by disrupting Complainant’s business by offering competing services. Use of a domain name to disrupt Complainant’s business by offering competing goods and services may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Further, use of a disputed domain name which is unrelated to a complainant’s business may demonstrate bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant provides screenshots of the webpages associated with the disputed domain names which shows the <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com>, <tmetropcs.com>, <metropcspcs.com>, and <metropcsvip.com> domain names redirect to <dell.com>. See Compl. Exs. D, E, F, G, I and K. Furthermore, the <metropcspayonline.com> domain name redirects to the <theskinnycelebs.com> domain name and the <metropcstrainng.com> and <metrovipmetropcs.com> domain names redirect to Verizon Wireless. See Compl. Exs. H, J and L. Accordingly, the Panel finds that Respondent uses the disputed domain names in bad faith to disrupt complainant’s business by redirecting internet users to competing webpages under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain names. A respondent may be presumed to have actual knowledge of complainant’s rights in the mark where a mark is famous per Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant contends that the METROPCS mark was well renowned and famous at the time Respondent registered the disputed domain names. To support this allegation, Complainant submits multiple articles and photographs regarding the success of the METROPCS mark. See Compl. Ex. B. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the METROPCS mark prior to registration of the disputed domain names under 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 <ametropcs.com>, <gmetropcs.com>, <nmetropcs.com>, <tmetropcs.com>, <metropcspayonline.com>, <metropcspcs.com>, <metropcstrainng.com>, <metropcsvip.com>, and <metrovipmetropcs.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 17, 2018
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