WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spacebound, Inc. v. Amaben Internet Services Inc.
Case No. D2011-1403
1. The Parties
The Complainant is Spacebound, Inc. of Lagrange, Ohio, United States of America, represented by Walker & Jocke, United States of America.
The Respondent is Amaben Internet Services Inc. of Moncton, New Brunswick, Canada.
2. The Domain Name and Registrar
The disputed domain name <price-plunge.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2011. On August 19, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On August 22, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on September 19, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of marks registered on the principal register of the United States Patent and Trademark Office (USPTO) for PRICE PLUNGE. Complainant’s mark was registered on June 21, 2011, with the application filed on April 18, 2010. The mark is registered for use with retail store services for a variety of goods. The Complainant also filed another registration application for that mark for use in connection with computerized on-line ordering of general merchandise.
The disputed domain name was registered on February 24, 2011. From evidence and assertions in the Complaint, since August 17, 2011, the disputed domain name has not resolved to an active website. There is otherwise no evidence in the case file as to the business activity of the Respondent.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to its PRICE PLUNGE mark. The Complainant filed for its mark long before the Respondent’s registration of the disputed domain name. The Complainant says that the Respondent therefore had constructive notice of the Complainant’s mark when it filed for registration of that mark on April 18, 2011. The Complainant has used the website at “www.priceplunge.com” for retail services at least as early as December 21, 2010. From this, the Complainant says that it also has common law trademark rights in its mark as early as December 21, 2010.
The Complainant says that the disputed domain name is identical to its PRICE PLUNGE mark, except for the hyphen in the disputed domain name.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no relevant trademark registration of application for a mark that includes “price” or “plunge”. The Complainant did a Google search for the name of the Respondent combined with the terms “price” and “plunge” however found no results. From this, the Complainant says that the Respondent does not appear to use the PRICE PLUNGE mark.
The Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant’s attorney sent a “cease and desist” letter on March 16, 2011 requesting the Respondent to cease all use of the disputed domain name and any trade names, trademarks, and other domain names that were likely to cause confusion with the Complainant’s mark. The Complainant asked the Respondent to reply by April 14, 2011 but no response was received.
The Complainant claims that the Respondent appears to be a “fly-by-night” entity, as its mailing address is a UPS store, which is shown on a Google street view as a retail mailing outlet in a strip shopping mall. Further, the Complainant was unable to find any evidence of the Respondent on the Internet. Given these facts, the Complainant says that it is not possible to conceive of a circumstance in which the Respondent could legitimately use the disputed domain name. The Respondent is passively holding the disputed domain name and, as such, has been used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
There is no dispute that the Complainant relevantly has rights in its PRICE PLUNGE mark. The Panel finds that the disputed domain name is confusingly similar to that mark. The only difference between them is the inclusion of a hyphen between “price” and “plunge”. The inclusion of a hyphen is a trivial difference. The disputed domain name and the Complainant’s mark are otherwise identical in all respects.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) at paragraph 2.1.
In this case, the Panel finds that the Complainant has presented a prima facie case against the Respondent. The Respondent has chosen not to respond to that Complaint. There is no evidence in the case file which suggests to the Panel that the Respondent might have a right or legitimate interest in the disputed domain name. The Respondent has not used the disputed domain name in connection with a website of a kind which might be suggestive of a right or legitimate interest.
By choosing to submit no reply, the Respondent has provided no explanation or evidence as to what the connection is between the terms “price-plunge” and its activities. In the absence of such an explanation, the Panel considers that the only reasonable inference is that the Respondent registered the disputed domain name to exploit the value of the Complainant’s mark. Such a use cannot be a basis for a right or legitimate interest under the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See e.g. SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
Normally speaking, bad faith cannot be found where a domain name is registered before a mark. Strictly, this is the case here. At the date of the registration of the disputed domain name (in February 2011), the Complainant had only an application for a mark. This issue is addressed in paragraph 3.1 of the WIPO Overview 2.0, relevantly as follows:
“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?
Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. …
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”
The record in this Complaint shows no direct evidence as to the Respondent’s motivation in registering and then using the disputed domain name. There is little evidence in the case file as to the Respondent’s business and the disputed domain name has not been used in connection with a website.
However, there is circumstantial evidence of bad faith in this case, of a kind described in the qualification in paragraph 3.1 of the WIPO Overview 2.0. The registration of the disputed domain name was some time after the Complainant’s application for its mark. The Respondent has registered a domain name that is confusingly similar to, and which wholly incorporates, the Complainant’s mark. While made of a combination of common terms, there is no evidence that the combination of those terms is, per se, particularly common. The Respondent registered the disputed domain name in February 2011, shortly after the Complainant claims to have begun using an almost identical domain name in connection with its business. As noted in the Complaint, the Respondent does not have a clear identity, and its address is effectively a post office box. It also appears unlikely to the Panel that the Respondent can have registered a domain name so closely similar to the Complainant’s mark, but had no awareness of the Complaint’s mark or its business. Further, as noted above, the Respondent has chosen to submit no formal response. As such, the Panel considers that it is reasonable to draw a negative inference from the Respondent’s failure to reply.
For all these reasons, the Panel considers that there is a reasonable inference that the Respondent registered the disputed domain name to take some unfair advantage of the Complainant’s mark or reputation. As such, the Panel finds that the disputed domain name was registered and has been used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <price-plunge.com>, be transferred to the Complainant.
James A. Barker
Dated: October 3, 2011