WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CouponCabin LLC v. Transure Enterprise Ltd, Host Master/ Above.com Domain Privacy
Case No. D2011-1571
1. The Parties
Complainant is CouponCabin LLC of Whiting, Indiana, United States of America, represented by Latham & Watkins LLP, United States of America.
Respondent is Transure Enterprise Ltd, Host Master of Tortola, Virgin Islands of United Kingdom of Great Britain and Northern Ireland/ Above.com Domain Privacy, of Beaumaris, Victoria, Australia.1
2. The Domain Name and Registrar
The disputed domain name <mycouponcabin.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 19, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 20, 2011, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 27, 2011.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 20, 2011.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 1, 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
Since 2002, Complainant, together with its affiliated companies, operates a website under “www.couponcabin.com” which provides links to online discounts and coupons.
Complainant, by means of assignment from its predecessor in interest and corporate affiliate CouponCabin, Inc. dated December 15, 2010, is the owner of at least the following trademark registrations for COUPON CABIN:
United States word mark COUPONCABIN, United States Patent and Trademark Office (USPTO), Registration Number 3028129, Registration Date: December 13, 2005; Status: Active.
United States word mark COUPON CABIN, United States Patent and Trademark Office (USPTO), Registration Number 3666660; Registration Date: August 11, 2009; Status: Active.
United States word mark COUPONCABIN.COM, United States Patent and Trademark Office (USPTO), Registration Number 3666710; Registration Date: August 11, 2009; Status: Active.
The disputed domain name was created on April 10, 2008. By the time of the filing of the original Complaint, namely on September 16, 2011, the disputed domain name redirected to a website at “www.mycouponcabin.com” which was a typical parking-site composed of hyperlinks to numerous third parties’ websites, many of which concern businesses relating to online discounts and coupons (e.g. <dealfind.com>).
Complainant requests the disputed domain name to be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to the trademark COUPONCABIN in which Complainant has rights.
Complainant asserts that it and its predecessor in interest and corporate affiliate CouponCabin Inc. have extensively promoted, advertised and used their COUPONCABIN marks since March 2002 and have, thus, established substantial goodwill therein.
Complainant argues that the disputed domain name is confusingly similar to the COUPONCABIN trademarks because the disputed domain name not only wholly encompasses Complainant’s marks, but the prefix “my” is of inferior distinctive importance and rather refers to the trademark than to divert from it.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant asserts not to have licensed or authorized Respondent in any other way to use its COUPONCABIN trademark or to incorporate it into any domain name.
Complainant states that it has clear trademark priority in COUPONCABIN since at least one of its registered trademarks predates Respondent’s initial registration of the disputed domain name.
Complainant further argues that the fact that the disputed domain name resolved, as of the date of the original Complaint, to a “parking-site” that was advertising the services of third parties in competition with Complainant, clearly did not establish any rights or legitimate interests of Respondent neither in the COUPONCABIN mark nor in the disputed domain name.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant argues, inter alia, that the disputed domain name resolved to a parking-site containing links to Complainant’s direct competitors, and that such linking was not a bona fide offering, but rather one which sought to profit from confusion with Complainant.
Complainant takes the view that even if Respondent denied knowledge of the COUPONCABIN marks, it must be deemed to have at least constructive notice of Complainant’s group of companies’ trademark rights in the COUPONCABIN mark by virtue of the USPTO trademark registration.
Complainant also points to the fact that Respondent registered the disputed domain name through the use of a privacy shield service which in the case in hand caused further evidence of bad faith.
Finally, Complainant stresses that Respondent has been subject of at least 65 domain name disputes proceedings with the Center and another 47 such proceedings with the National Arbitration Forum (NAF), in all of which the panels ordered the domain names to be transferred to the trademark owner. This demonstrated an undeniable pattern of conduct in the registration of domain names that reproduced third parties trademarks in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <mycouponcabin.com> is confusingly similar to the trademark (word mark) COUPONCABIN in which Complainant has shown to have rights.
The disputed domain name incorporates the COUPONCABIN trademark in its entirety.
Moreover, the existence of the prefix “my” in the disputed domain name is insufficient of avoiding the finding of at least confusing similarity with Complainant’s trademark. Not only is the possessive pronoun “my” both grammatically and phonetically of inferior importance compared to the component “couponcabin” which wholly matches Complainant’s trademark. In addition, it is a quite common marketing strategy to combine the name of a product or a service with possessive pronouns such as “my”, “you” or “our” in order to create a personal identification of consumers with the said product or service and thus the trademark involved (see e.g. Ferrero S.p.A. v. Mr. Jean-François Legendre, WIPO Case No. D2000-1534).
Therefore, the Panel is satisfied that the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel further finds Complainant to have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The Panel is convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has it been commonly known by the disputed domain name, nor it can be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
The disputed domain name, at least at the time of the filing of the original Complaint, resolved to a typical parking site with hyperlinks which redirected Internet users to numerous third parties’ websites not at all specifically tailored to Complainant, but rather including commercial Internet offers of some of Complainant’s direct competitors in the business of online discounts and coupons (e.g. <dealfind.com>). In the eyes of the Panel, it is quite evident that Respondent set up the website “www.mycouponcabin.com” with the clear intent to divert Internet users, who were actually interested in Complainant’s business, and, thus, to generate so-called “Click-Through-Commissions” or “Pay-Per-Clicks” from the diverted Internet traffic. Such use of the disputed domain name, however, does not of itself confer any rights or legitimate interests arising from a “bona fide offering of goods or services” or from a “legitimate noncommercial or fair use” as provided by the Policy (for further references, see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.6).
Besides, it carries weight in the eyes of the Panel that – starting in 2008 until today – WIPO UDRP panels have rendered roughly 65 decisions against Respondent in all which it was held that the concerned domain names were to be transferred upon the respective trademark owners (see e.g.: Valero Energy Corporation, Valero Marketing and Supply Company v. Transure Enterprise Ltd. / Above.com Domain Privacy, WIPO Case No. D2011-0920; Tractor Supply Co. of Texas, LP, and Tractor Supply Company v. Above.com Domain Privacy / Transure Enterprise Ltd., WIPO Case No. D2011-0487; DB Corp. Ltd. v. Above.com Pty. Ltd. Domain Privacy / Host Master, Transure Enterprise Ltd., WIPO Case No. D2010-1581). Against this background, the Panel finds nothing in this case that – in light of Complainant’s undisputed allegations and in the absence of any Response – would bring Respondent’s registration and use of the disputed domain name in line with the justification principles set forth by paragraph 4 (c) of the Policy.
Accordingly, Complainant has made up a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on September 28, 2011.
Therefore, the Panel rules that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel has no serious doubts that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s trademark COUPONCABIN as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has produced sufficient evidence that it owns comprehensive trademark rights in the designation COUPONCABIN which has been in use and has consistently been advertised and promoted already since 2002. Complainant’s trademark portfolio includes at least one trademark registration of the year 2005 which predates the creation of the disputed domain name roughly two and a half years.
The Panel admits that Complainant has brought nothing forward according to which Respondent must have had knowledge of the COUPONCABIN trademark at the time of the registration of the disputed domain name on or after April 10, 2008. Given the overwhelming number of at least 65 WIPO UDRP proceedings against Respondent from 2008 until today (plus another 47 UDRP proceedings before the NAF with the very same results!), the Panel, however, is convinced that Respondent is constantly engaged in the business of registering third parties’ trademarks as domain names in order the run pay-per-click (PPC) websites, thus Respondent either had constructive notice or should have known of Complainant’s trademark rights at the time of the disputed domain name registration or was willfully blind when doing so (for the various concepts to find bad faith in the absence of knowledge, see WIPO Overview 2.0, paragraph 3.4). Accordingly, the Panel sees no reason to seriously question that Respondent’s business model fulfills the requirements set forth by paragraph 4(b)(iv) of the Policy also in the very case at hand.
This is even more true as Respondent constantly is making use of a privacy service (namely Above.com Domain Privacy) when registering and using domain names, including the disputed domain name. Although it is consensus view among UDRP Panels that the use of a privacy service is not in and of itself an indication of bad faith, in the case at hand, however, in this Panel’s view it is clear that Respondent for years has concealed his true identity behind privacy services, which constitutes as such a manner of use of privacy services that must be deemed as acting in bad faith (see WIPO Overview 2.0, paragraph 3.9).
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled.
Accordingly, the Panel concludes that Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <mycouponcabin.com>, be transferred to Complainant.
Stephanie G. Hartung
Dated: November 14, 2011
1 . It appears likely from the Case File that Above.com Domain Privacy is a privacy protection service affiliated with the concerned registrar Above.com, Inc. and that Transure Enterprise Ltd., Host Master is the underlying domain name registrant. Therefore, unless otherwise indicated, the term “Respondent” as used by the Panel in the case at hand to refer to the latter underlying registrant.