Assurance Wireless USA, L.P. v. tatiana graxirena / hakims helping hands
Claim Number: FA2202001984570
Complainant is Assurance Wireless USA, L.P. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is tatiana graxirena / hakims helping hands (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <assurancewirelessonline.com> and <assurancewirelessebb.com>, registered with Google 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2022; the Forum received payment on February 16, 2022.
On February 16, 2022, Google LLC confirmed by e-mail to the Forum that the <assurancewirelessonline.com> and <assurancewirelessebb.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 February 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2022 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@assurancewirelessonline.com, postmaster@assurancewirelessebb.com. Also on February 17, 2022, 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 March 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Assurance Wireless USA, L.P., provides low-income customers with free mobile phones, data plans, and calling and texting minutes and is a subsidiary of T-Mobile USA, Inc..
Complainant asserts rights in the ASSURANCE WIRELESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,978,878, registered June 14, 2011).
Respondent’s <assurancewirelessonline.com> and <assurancewirelessebb.com> domain names are identical or confusingly similar to Complainant’s ASSURANCE WIRELESS mark, with each domain containing Complainant’s entire mark, merely adding the terms “online” or “ebb” before appending the “.com” generic top-level domain (“gTLD”) to each domain.
Respondent lacks rights and legitimate interests in the <assurancewirelessonline.com> and <assurancewirelessebb.com> domain names as it is not commonly known by the at-issue domain names and is neither an authorized user nor a licensee of Complainant’s ASSURANCE WIRELESS mark. Additionally, Respondent does not use the domain names for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, instead redirecting both domain names to <hakimshelpinghands.com>, which displays content which mimics Complainant’s legitimate <assurancewireless.com> website.
Respondent registered and uses the <assurancewirelessonline.com> and <assurancewirelessebb.com> domain names in bad faith. Complainant argues that Respondent’s registration of multiple domain names containing the ASSURANCE WIRELESS mark, along with the notoriety of its mark demonstrate that Respondent registered the at-issue domain name with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ASSURANCE WIRELESS mark.
Complainant’s rights in ASSURANCE WIRELESS existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent uses the at-issue domain name to redirect internet traffic to <hakimshelpinghands.com>, a website made to look like Complainant’s genuine website.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has rights in its ASSURANCE WIRELESS trademark though its registration with the USPTO. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO).
Respondent’s at-issue domain names each contain Complainant’s ASSURANCE WIRELESS trademark followed by the term “online” or “ebb,”, with all followed by the top-level “.com.” The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either of the at-issue domain names from Complainant’s ASSURANCE WIRELESS mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s at-issue domain names are each confusingly similar to Complainant’s ASSURANCE WIRELESS trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue 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)”).
The WHOIS information for the at-issue domain names ultimately identifies the domain names’ registrant as “tatiana graxirena / hakims helping hands” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either of the domain names or by Complainant’s trademark. The Panel therefore concludes that Respondent is not commonly known by either of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar domain names to redirect internet traffic to a website made to look like what might be encountered on Complainant’s genuine website. Respondent’s use of the at-issue domain name to pass itself off as Complainant in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s at-issue domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each domain names.
As mentioned above regarding rights and legitimate interests, Respondent’s confusingly similar domain names redirect internet traffic to a website pretending to be sponsored by Complainant. Doing so shows Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Additionally, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in ASSURANCE WIRELESS. Respondent’s prior knowledge is shown by the notoriety of Complainant’s ASSURANCE WIRELESS mark, by Respondent’s registration of multiple domain names containing Complainant’s mark, and by Respondent’s redirection of <assurancewirelessonline.com> and <assurancewirelessebb.com> to eventually resolve to a website that appears to be sponsored by Complainant. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the confusingly similar domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <assurancewirelessonline.com> and <assurancewirelessebb.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 11, 2022
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