WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FatWaIlet, Inc. v. Huanglitech, Domain Admin / Above.com Domain Privacy
Case No. D2012-1150
1. The Parties
The Complainant is FatWaIlet, Inc. of Beloit, Wisconsin, United States of America (“US”), represented by Reinhart Boerner Van Deuren, s.c., US.
The Respondent is Huanglitech, Domain Admin of Shenzhen, Futian District, China / Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <fatwallett.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2012. On June 6, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 7, 2012, Above.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 12, 2012, the Center transmitted an email communication to Above.com, Inc. seeking clarification about the registrant identity, to which Above.com, Inc. replied on June 14, 2012. The Center replied on June 14, 2012 asking for confirmation of the information provided by Above.com, Inc. and, since no reply was further received by Above.com, Inc., the Center proceeded on the basis that the Respondent “Huanglitech” is the registrant of the disputed domain name <fatwallett.com>.
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 June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2012.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on July 16, 2012. 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.
After reviewing the Complaint the Panel considered that all three elements were not sufficiently detailed and requested, by means of Administrative Procedural Panel Order No. 1, dated July 27, 2012, the Complainant to file a further submission, not exceeding 10 pages, explaining in detail how, in its view, the three elements of the Policy were satisfied in this case, in particular with regard to bad faith registration and use. The Complainant was further invited to provide any documentary evidence that it wished the Panel to consider.
The Complainant was required to transmit its submission in response to this Administrative Procedural Panel Order No.1 on or before August 6, 2012. The Respondent was given until August 14, 2012, to respond to the Complainant’s further submission. In view of the above, and pursuant to paragraph 15(b) of the Rules, the Panel extended the due date to render its Decision on or before August 24, 2012.
On August 3, 2012, within the due date, the Complainant submitted a Supplemental Response. Respondent did not reply to the Administrative Procedural Panel Order No. 1 within the due date.
4. Factual Background
FatWallet, Inc is an American enterprise dedicated to promoting goods and services of others through the distribution of discount offers. Its goods and services consist of providing consumers with coupons, product rebates, vouchers and price comparison information on third party products. The Complainant works with retailers and manufacturers to advertise and make available to consumers the above mentioned products.
The Complainant is the owner of the US trademark registration FATWALLET No. 2609874.
The Complainant is the owner of the domain name <fatwallet.com> since 1991.
The disputed domain name was registered on April 21, 2007 and is used as a “pay-per-click” site.
5. Parties’ Contentions
The Complainant states that the disputed domain name is nearly identical to the Complainant’s mark. The disputed domain name is simply an intentional misspelling of Complainants trademark.
The Complainant states that it has exclusive rights in the trademark FATWALLET, and has not granted any license/permission/authorization or consent to use FATWALLET in the disputed domain name to the Respondent. The Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the FATWALLET trademark and illegitimately trade on its fame for commercial gain and profit. There is no reason why the Respondent should have any right or interest in such disputed domain name.
Finally, the Complainant states that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website. As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the FATWALLET trademark fame.
As a result, the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the disputed domain name registered by the Respondent 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademark FATWALLET based on the evidence provided by the Complainant.
The disputed domain name consists of the trademark FATWALLET plus an additional letter “t”. The Panel considers that the addition of the letter “t” does not give any new distinctiveness to the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under paragraph 4(a)(ii), the Complainant will be deemed to have satisfied this element of the Policy.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name FATWALLET. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark FATWALLET. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
In the absence of a Response this Panel is satisfied that the Complainant has complied with the second element of paragraph 4(a) of the Policy by establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which was not rebutted by the Respondent.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of the Complainant’s trademark FATWALLET and the additional letter “t”. It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the Respondent to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third party rights.
In this Panel’s opinion, one can reasonably presume that the Respondent in this case (who has decided not to participate in these proceedings) must have registered the disputed domain name with no exploration whatsoever of the possibility of third-party rights, and with apparent disregard whether the disputed domain name it was registering was a domain name which corresponded to the distinctive trademark of another. If this were the case, the Respondents’ apparent lack of any good faith attempt to ascertain whether or not the disputed domain name was infringing someone else’s trademark, such as by conducting trademarks searches or search engine searches, simply supports a finding of bad faith.
In any event, since the Respondent registered a domain name practically identical to the trademark of another, if not for the misspelling, this can only lead the Panel to conclude that the Respondent must have had knowledge of the Complainant’s prior rights, and by registering the disputed domain name was attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
The Panel considers that Respondent’s objective in registering the disputed domain name was to create confusion in the public’s mind and more particularly to generate revenue by directing Internet users to the website.
Furthermore, the Panel considers that by registering a domain name corresponding to a widely known trademark, the Respondent has intentionally tried to divert Internet user’s to its webpage, for commercial gain. This behavior is evidence of bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
The above can only lead the Panel to conclude that the Respondent’s attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
Accordingly, for the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <fatwallett.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: August 20, 2012