Recharge, Inc. v. Kennan Davison / Jika, Inc.
Claim Number: FA2207002003712
Complainant is Recharge, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Kennan Davison / Jika, Inc. (“Respondent”), represented by Stephen Jadie Coates of Coates IP LLP, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rechargepayment.com>, registered with Amazon Registrar, Inc..
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 July 11, 2022; the Forum received payment on July 11, 2022.
On July 12, 2022, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <rechargepayment.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. 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 July 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@rechargepayment.com. Also on July 13, 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.
A timely Response was received and determined to be complete on August 2, 2022.
On August 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
On August 8, 2022, Complainant filed an Additional Submission. On August 9, 2022, Respondent filed an Additional Submission.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Recharge, Inc., offers a subscription payments platform and service. Complainant has rights in the RECHARGE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,160,296, registered March 14, 2017). The disputed domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the RECHARGE mark in its entirety and adds the term “payment” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the RECHARGE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to Respondent’s competing website. Respondent uses the disputed domain name to engage in typosquatting.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name in order to divert customers for commercial gain. Respondent registered the disputed domain name to engage in typosquatting. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the RECHARGE mark.
B. Respondent
i) Respondent, Jika Inc. dba Skio, acquired the disputed domain name on March 28, 2022.
ii) Respondent has rights and legitimate interests in the disputed domain name because Respondent makes a nominative fair use of the domain by using the resolving webpage to display comparative advertising information. Respondent has not engaged in typosquatting. Complainant has engaged in anticompetitive behavior.
iii) Respondent did not register and use the disputed domain name in bad faith. Respondent registered the disputed domain name in order to develop a comparison website, and does not cause confusion as to the affiliation of the website for commercial gain. Respondent has not engaged in typosquatting.
C. Additional Submissions
Complainant’s Additional Submission
i) As Respondent rightly points out, the parties’ prior advertising dispute is beyond the purview of this proceeding and therefore Complainant respectfully requests that the Panel disregard Respondent’s repeated and misplaced, and moreover unfounded, allegations with respect to that matter. Complainant cited the cease-and-desist letter in its Complaint only to establish that Respondent’s reference to “Overcharge Pro” was directed at Complainant and that Respondent had prior knowledge of Complainant’s rights. Respondent was clearly aware of Complainant, having previously received the referenced letter and confirmed its receipt. Respondent, in contrast, makes repeated substantive references to the parties’ prior advertising dispute in an attempt to enter additional allegations into the record regarding Complainant’s so-called ‘anticompetitive and bullying behavior.’
ii) Respondent’s reliance on Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc., Claim Number: FA2005001895951 (Forum July 31, 2020) is misplaced, as that decision concerned the domain name that itself incorporated the specific terms ‘compare to.’ The panelist in that decision did state that a ‘compare to’ domain name might be legitimate if it is used, or is intended for use, for an authentic, non-confusing comparison website. Respondent turns a blind eye to the critical fact that the present proceeding does not concern a domain with the key “compare to” terms, and thus the decision is not persuasive precedent in this matter. More to the point, the addition of key words ‘compare to’ in the domain in the Hästens Sängar AB proceeding was a circumstance that was emphasized throughout the proceeding.
iii) Respondent uses the disputed domain name not ‘by necessity,’ but merely as bait by which to lure unsuspecting Internet users to its own website. While Complainant previously took issue with the content of the comparative advertising on Respondent’s own website, it does not mean that Respondent was subsequently excused in registering the disputed domain name and using it to navigate Internet users to its own webpage that displays comparative advertising content.
Respondent’s Additional Submission
ii) Complainant does not refute the holding or precedent in Hästens proceeding that allows for use of a competitor’s mark for a comparison advertising site, nor does it offer anything new in its submission. Complainant fails to show exceptional circumstances as to why it should be permitted to reargue issues that it already has or should have done in its Complaint. If Complainant wanted to demonstrate how Hästens, a leading precedent for use of a competitor’s mark for comparative advertising does not apply in this case, it should have done so from the get-go. Consistent with the behavior documented in Respondent’s Response, Complainant continues to bully Respondent through vague allegations of trademark infringement and deceptive marketing. This submission is simply an extension of that anticompetitive and bullying behavior meant to increase the costs on the parties, in particular Respondent, and to delay conclusion of this dispute.
1. Complainant has established rights in the RECHARGE mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 5,160, 296 registered March 14 2017: first use in commerce October 14, 2014).
2. Complainant offers its goods and services through its subscription payments software platform as well as Complainant’s website hosted at <rechargepayments.com>. Complainant has used its RECHARGE mark to promote its subscription payments platform for e-commerce businesses since 2014.
3. The disputed domain name was registered on June 4, 2015. Respondent acquired the disputed domain name on June 16, 2022.
4. Respondent, Jika Inc. d/b/a Skio, provides an online software service for providing billing and payment functionality for third parties, to make it easier for others to sell subscription plans. It has been offering these services since April 2021 under the SKIO brand and trademark.
5. Complainant sent a cease-and-desist letter to Respondent on August 21, 2021. Respondent confirmed its receipt. The cease-and-desist letter demanded that Respondent immediately cease and desist the improper conduct and take immediate actions to address the harm Respondent has already inflicted on Complainant’s business by claiming Respondent was improperly using Complainant’s protected trademark while making several false and misleading claims to existing and potential customers about Complainant’s offered features, product functionality, and pricing.
6. The disputed domain name resolves to a website which automatically redirects Internet visitors to a webpage maintained by Complainant’s competitor Jika, Inc.’s (d/b/a Skio) (‘Skio’).
7. The website to which the disputed domain name redirects features a chart comparing Skio’s services to its competitors and lists those competitors as ‘Overcharge Pro,’ ‘Retextion,’ and ‘Smartrr.’
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.
Procedural Matter – Unsolicited Additional Submissions
Respondent argues in its unsolicited additional submission that Complainant fails to show exceptional circumstances as to why Complainant’s additional submission should be accepted. Complainant makes no attempt to meet this threshold, and its submission fails to meet the burden, and thus Complainant’s additional submission must be disregarded.
The Panel does not interpret paragraph 12 of the Policy as precluding acceptance of additional unsolicited submissions under the panel's general powers conferred by paragraph 10 of the Policy, particularly having regard to the panel's duty under paragraph 10(b) of the Policy to ensure each party is given a fair opportunity to present its case. Paragraph 7 of the Forum’s Supplemental Rules allows for certain submissions after the filing of the complaint and response, but only at the discretion of the panelist. If a respondent raises matter which a complainant could not have been expected to have addressed in its complaint, admission of an unsolicited reply may be warranted in the interests of fairness.
Complainant’s additional submission offers rebuttal to some of Respondent’s arguments which could not be foreseen e.g., Complainant’s ‘anticompetitive and bullying behavior’ and Respondent’s reliance on Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc., Claim Number: FA2005001895951 (Forum July 31, 2020). The Panel is of the view that the above statements and reflections on the issue are relevant and applicable. Complainant’s additional submission took place on the same date the Panel was appointed and Respondent’s additional submission rebutting Complainant’s argument was made on the very next day, and thus they do not cause a delay in the proceeding. Therefore, the Panel determines that the additional submissions of the parties can be taken into consideration.
Complainant asserts rights in the RECHARGE mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 5,160, 296 registered March 14 2017: first use in commerce October 14, 2014). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the RECHARGE mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues the disputed domain name <rechargepayment.com> is identical or confusingly similar to Complainant’s RECHARGE mark. The addition of a gTLD and a descriptive term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The disputed domain name contains the RECHARGE mark in its entirety while adding the descriptive term ‘payment’ in connection with the services offered by the parties and the ‘.com’ gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per 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 contends that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the RECHARGE mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as ‘Jika Inc./ Kennan Davison.’ Complainant further asserts that it has not licensed or otherwise authorized Respondent to use Complainant’s RECHARGE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to Respondent’s competing website. Where a respondent uses a domain to redirect users to competing services, the panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides evidence of the disputed domain name’s having resolved to Respondent’s own website which offers competing services as well as comparative advertising. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant argues that, because the disputed domain name contains Complainant’s own domain name <rechargepayments.com> while omitting the letter ‘s,’ Respondent has engaged in typosquatting and thus demonstrated its lack of rights or legitimate interests in Complainant’s mark. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum April 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent contends that it has a legitimate right to the disputed domain name through its use to direct to a landing page with the comparative advertising information. That use is in connection with a bona fide offering of goods or services and constitutes legitimate fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish Complainant’s mark. The disputed domain name’s landing webpage shows the comparative advertising information of not just Complainant and Respondent’s products and services, but also of two other peer companies. Respondent’s use of the disputed domain name amounts to ‘an authentic, non-confusing comparison website’ as contemplated by the Forum in Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc.case. Complainant’s cease-and-desist letter conflated vague allegations of false and misleading product comparisons with trademark infringement in an attempt to prevent Respondent from providing true and accurate comparison information of competing services in its field. Complainant did not want consumers to see any comparative information about it or its services and tried to use trademark law to stifle its competition. Complainant is a trademark bully.
Respondent further contends that Complainant’s allegations of typosquatting are unfounded. Typosquatting occurs when a party registers a domain name with intentionally misspelled words with the intention of intercepting and siphoning off traffic from its intended destination. That is not the case here. Respondent uses the disputed domain name to show comparative advertising information of Complainant, Respondent and two other peer companies.
Complainant rebuts that as Respondent rightly points out, the parties’ prior advertising dispute is beyond the purview of this proceeding. Respondent’s reliance on Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc., claim number: FA2005001895951 (Forum July 31, 2020) is misplaced, as that decision concerned the domain name, a domain that itself incorporated the specific terms ‘compare to.’ The panelist in that decision did state that a ‘compare to’ domain name might be legitimate if it is used, or is intended for use, for an authentic, non-confusing comparison website. However, Respondent turns a blind eye to the critical fact that the present proceeding does not concern a domain with the key ‘compare to’ terms, and thus the decision is not persuasive precedent in this matter. The addition of key words ‘compare to’ in the domain in the Hästens Sängar AB proceeding was a circumstance that was emphasized throughout the proceeding.
The Panel notes that the webpage to which the disputed domain name redirects features the headline ‘ready to sell subscriptions without ripping your hair out?’ and a link below to ‘request demo’ from Skio. The text that follows states: “Sleep soundly at night knowing we actually know what we’re doing [.] A world-class subscription experience requires world-class engineers. It’s painful hiring said world-class engineers, but we’ve done it. In other words, the webpage to which the disputed domain name redirects offers services competing with Complainant. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use at least in terms of offering competing services regardless of the legitimacy of the comparative adverting information displayed at the disputed domain name’s redirected landing page. For the same reasons, the Panel finds that Respondent has engaged in typosquatting, and thus demonstrated its lack of rights or legitimate interests in the disputed domain name.
As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered the disputed domain name after Complainant first adopted and began using the RECHARGE mark. Furthermore, Respondent clearly had actual knowledge of Complainant’s rights in its name when Respondent registered the disputed domain name. Respondent asserts that it registered the disputed domain name with the intent to establish a comparison website, which is a permissible use of the disputed domain name. Further, Respondent’s actual use of the disputed domain name is to show the comparative advertising information it intended to display.
The Panel notes that Complainant’s RECHARGE mark was well known prior to Respondent’s acquisition of the disputed domain name, in the relevant industry and among consumers due to the fact that: (i) Complainant raised $327 million in venture capital funding, most recently raising $227 million in May 2021; (ii) Complainant’s RECHARGE-associated subscription payments platform struck an immediate chord with consumers and its valuation has grown to well over $2 billion; (iii) Complainant offers its goods and services through its subscription payments software platform as well as Complainant’s website hosted at <rechargepayments>; and (iv) as a result, Complainant has garnered a great deal of positive publicity, including in articles published by The Wall Street Journal, Business Insider, Forbes, Total Retail, Authority Magazine, CB Insights, PR Newswire, Dot.LA, MarTech Series, Chain Store Age, Building the Future Podcast, Deloitte, DealMakers Podcast, Techcrunch, and Crunchbase.
The Panel further notes that (i) Complainant’s RECHARGE mark is fully incorporated in the disputed domain name and Respondent made a direct reference to Complainant on the webpage to which the disputed domain name redirects; (ii) Respondent previously received a cease-and-desist letter from Complainant; and (iii) the disputed domain name <rechargepayment.com> is virtually identical with Complainant’s domain name <rechargepayments.com> by which Complainant’s main website is operating. Given the totality of the circumstances above, the Panel infers that Respondent acquired the disputed domain name with actual knowledge of Complainant’s right in the RECHARGE mark to direct Internet users seeking Complainant’s website to the disputed domain name’s redirected landing page of Respondent, which offers competing services with Complainant as well as the comparative advertising. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith regardless of the legitimacy of the comparative advertising.
Complainant contends that Respondent intentionally uses the virtually identical disputed domain name – as compared to Complainant’s RECHARGE mark and its domain name – to create initial interest confusion with a directly competing service. Complainant further contends that Respondent attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing website for commercial gain. Respondent rebuts that the use of the disputed domain name to direct to Respondent’s webpage that clearly shows comparative advertising information is allowed under the Policy. Consumers visiting the site are not confused as to source or affiliation and would in no way be misled to believe that the site is offered, endorsed or authorized by Complainant. Respondent has no intention, nor has it ever made any attempt to cybersquat the disputed domain name for its own benefit. Respondent does not have any history of cybersquatting behavior and has not registered the disputed domain name primarily for the purpose of disrupting Complainant’s business. As such, there cannot be a finding of bad faith to the use or registration of the disputed domain name.
The Panel recalls that the redirected landing page by the disputed domain name offers competing services with Complainant as well as the comparative advertising. The Panel observes that use of a disputed domain name to redirect consumers to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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)). The Panel further notes that use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
As previously noted, Complainant provides evidence of the disputed domain name resolving to Respondent’s competing website. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv), regardless of the legitimacy of the comparative advertising.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rechargepayment.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 15, 2022
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