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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Constant Contact, Inc. v. Eliza Dushku

Case No. D2013-2216

1. The Parties

The Complainant is Constant Contact, Inc. of Waltham, Massachusetts, United States of America (“USA”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, USA.

The Respondent is Eliza Dushku of Tirana, Albania.

2. The Domain Name and Registrar

The disputed domain name <constant-contact.com> is registered with 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2013, the Registrar 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 January 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014.

The Center appointed Petter Rindforth as the sole panelist in this matter on January 30, 2014. 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.

The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in English, which is the language of the Registration Agreement for the disputed domain name as confirmed by the Registrar.

4. Factual Background

The Complainant is the owner of the trademark CONSTANT CONTACT, registered such as:

CONSTANT CONTACT (word), United States Patent and Trademark Office (“USPTO”) Reg. No. 2363937, with a first use in commerce on February 1, 1998 and registered on July 4, 2000 for goods in international class 9; and

CONSTANT CONTACT (word), USPTO Reg. No. 3052770, with a first use in commerce on February 1, 1998, and registered on January 31, 2006 for services in international class 42.

The Complainant is also the owner of other CONSTANT CONTACT related trademarks in the USA, as well as Canadian national and European Community trademarks, with filing dates later than September 2004.

(Printouts showing the above registrations are provided by the Complainant as Annexes 7 - 9 of the Complaint).

The disputed domain name <constant-contact.com> was registered on September 24, 2004. No detailed information is provided about the Respondent’s activities, apart from what is mentioned above under Procedural History, and below by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant was formed in 1995 and began operations in 1998, offering its services under the name “Constant Contact.” According to the Complainant, the company has since then grown from a small start-up to a leading provider of email marketing, social media marketing, event marketing and online survey tools for small businesses, associations and nonprofits by focusing on its customers’ satisfaction and needs with helpful, personal coaching. In 2006, the Complainant changed its name from Roving Software to Constant Contact, Inc. Today, more than 500,000 customers worldwide trust the Complainant to help them connect with their audience.

The Complainant is headquartered in Waltham, Massachusetts, USA, with four other offices in USA and one office in London, United Kingdom of Great Britain and Northern Ireland. The Complainant is ranked on Deloitte’s Technology Fast 500 for five years running, most recently at number 179.

Since September 29, 1998, the Complainant has operated a website at the domain name <constantcontact.com>.

The Complainant states that <constant-contact.com> is identical to the Complainant’s CONSTANT CONTACT trademark, with the only difference that the disputed domain name contains a hyphen between the words “constant” and “contact.”

Further, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has never authorized the Respondent to register or use the CONSTANT CONTACT trademark in any manner, and that the Respondent has never used, or made preparations to use <constant-contact.com> in connection with a bona fide offering of goods or services.

Finally, the Complainant concludes that the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent is using the disputed domain name <constant-contact.com> in connection with a monetized parking page that contains links to companies offering services similar to those offered by the Complainant, including links labeled “Newsletter Marketing”, “Autoresponder Marketing” and “Email Marketing Lists” (shown at Annex 6 of the Complaint). The confusion created by the disputed domain name makes potential customers to choose other services than the Complainant’s, disrupting the Complainant’s business.

The Complainant also refers to the fact that the Respondent has lost one previous UDRP dispute, where the panel stated that “the disputed domain name contains the Complainant’s wellknown trademark STARKEY and posts links related to the Complainant’s business field, thusthere is no bona fide use of the disputed domain name.” See Starkey Laboratories, Inc. v. Eliza Dushku, WIPO Case No. D2013-1679.

The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the 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.

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark CONSTANT CONTACT.

The relevant part of the disputed domain name is “constant-contact”, as it is a well-established practice that the generic Top-Level Domain (gTLD) suffix (i.e., “.com”) may be disregarded for this purpose. See Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only […], as it is well-established that the top-level domain names […] should be disregarded for this purpose”); see also Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd., WIPO Case No. D2008-0745 (“[i]t has been held that gTLDs, such as ‘.info’ and ‘.com’, can be ignored for the purpose of comparison of the trade mark with the domain name”).

The fact that the disputed domain name is written with a hyphen between the two words “constant” and “contact”, whereas the Complainant’s trademark is written as two separate words, does not make any differences either. A two letter word mark cannot, for pure technical reasons, be registered as a domain name. It must either be written as one word or with some punctuation marks such as a hyphen between the words as in this case.

The Panel therefore concludes that the disputed domain name <constant-contact.com> is confusingly similar to the Complainant’s trademark CONSTANT CONTACT.

B. Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the prima facie case that the Complainant has established under this paragraph of the Policy.

The Respondent is not an authorized agent or licensee of the Complainant’s goods or services and has no other permission to apply for any domain name incorporating the trademark CONSTANT CONTACT. See Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”)

There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

On the contrary, the Panel finds that the Respondent uses the disputed domain name for a parking site with links to competitors of the Complainant. Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd. WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannotgive to rise rights or legitimate interests”).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant has some USA national trademarks, registered prior to the registration of the disputed domain name, whereas the Respondent’s home country is Albania. Arguably this alone could not indicate that the Respondent was not aware of the Complainant. However, the Panel also notes that the Respondent registered <constant-contact.com> a bit more than four years after the date of the Complainant’s first USA trademark registration, and around the time when the said trademark has started to become more well-known among the public. The disputed domain name is practically identical to the Complainant’s trademark and although linked to a parking site, the said site having clear links to some competitors of the Complainant. Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name. See Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith”).

In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting Internet users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).

Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

7. Decision

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 <constant-contact.com> be transferred to the Complainant.

Petter Rindforth
Sole Panelist
Date: February 10, 2014

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