WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Patriot Supply Store, Inc., d/b/a My Patriot Supply v. Domain May be for Sale, Check Afternic.Com Domain Admin, Domain Registries Foundation
Case No. D2016-1573
1. The Parties
The Complainant is Patriot Supply Store, Inc., d/b/a My Patriot Supply of Sandpoint, Idaho, United States of America (“United States”), represented by Gavin Law Offices, PLC, United States.
The Respondent is Domain May be for Sale, Check Afternic.Com Domain Admin, Domain Registries Foundation of Panama City, Panama, represented by Willenken Wilson Loh & Delgado, LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <mypatriotsuppl.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2016. On August 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2016. The Respondent sent an informal email to the Center on August 9, 2016, consenting to the transfer of the domain name to the Complainant. On August 11, 2016, the Complainant requested that the proceeding continue, and the Respondent sent an informal email indicating that it would file a Response. The Response was filed with the Center on August 22, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on August 24, 2016. 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.
On August 24, 2016, the Complainant made an unsolicited supplemental filing. The Panel has decided to admit this filing for reasons explained below.
4. Factual Background
Since 2008, the Complainant has sold what it describes as “emergency preparedness and survival” goods to the “niche survivalist community” in the United States under the name “My Patriot Supply”.
The Complainant owns United States trade mark nos. 4631251, 4665940 and 4631252 for MY PATRIOT SUPPLY, all filed on December 18, 2013, in international classes 29, 31 and 35 respectively. Trade mark nos. 4631251 and 4631252 were registered on November 4, 2014, and trade mark no. 4665940 was registered on January 6, 2015.
The disputed domain name was registered by the Respondent on July 21, 2016.
The Respondent used the disputed domain name for a parking page with sponsored links relating to emergency supplies.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain name is confusingly similar to the Complainant’s trade mark. They are identical apart from the omission of the “y” in “supply”, which constitutes typosquatting.
The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not associated with, and has not been licensed by, the Complainant.
The Respondent has not used the disputed domain name for a bona fide offering of goods or services. Instead, the disputed domain name has been used as a parking page diverting users to competitors of the Complainant.
The Respondent has not been commonly known by the disputed domain name. Nor has it made a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has registered and used the disputed domain name in bad faith.
The Respondent has offered the disputed domain name for a sale at a price exceeding the Respondent’s out of pocket costs. The disputed domain name is listed on Name.com for USD 919. The fact that the Respondent almost immediately offered the disputed domain name for sale reflects the Respondent’s intent to profit at the expense of the Complainant’s trade marks.
The Respondent’s bad faith is also evidenced by the Respondent’s use of typosquatting and its attempt to divert the Complainant’s customers via links to competitor websites. The Complainant’s trade marks had been in use for some seven years before the disputed domain name was registered.
The Respondent is responsible, even if the advertising content is generated automatically by a third party.
The Respondent has been party to multiple domain name disputes. It has used slightly different registrant names in each case to avoid being discovered as a serial cybersquatter.
A summary of the Respondent’s contentions is as follows:
The Respondent acquires and holds domain names in high volume through lawful and fair methods. It has a “well-known dispute resolution policy” where it invites putative complainants to contact it regarding domain names that complainants believe correspond to a trade mark. And it has a liberal transfer policy whereby it typically agrees to swift transfer of domain names, typically irrespective of the legitimacy of the complainant’s arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings.
The Respondent had never heard of the Complainant, which is a company based in the United States. Upon learning of this matter and in an effort to resolve this matter expeditiously and without a substantial investment of time and expense by either party or the Panel, the Respondent contacted the Complainant and offered a voluntary transfer of the disputed domain name. The Complainant has rejected that offer.
Without admitting fault or liability and without responding substantively to the Complainant’s allegations, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, the Respondent stipulates that it is willing to voluntarily transfer the disputed domain name to the Complainant. The Respondent requests that the transfer be ordered without findings of fact or conclusions as to paragraph 4(a) of the Policy other than an order of transfer.
In numerous prior UDRP decisions, panels have consistently ruled that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name. Such panels consistently hold that it would be improper to issue any findings of fact in such cases.
Other panels have gone further to state that it would be unwise to issue findings of fact or conclusions in case the same issues were to arise in later proceedings.
C. Complainant’s Supplemental Filing
A summary of the Complainant’s supplemental filing is as follows:
Where a respondent has unilaterally consented to transfer a disputed domain name to a complainant, panels have typically (a) ordered transfer without reviewing the facts; (b) ordered transfer on the basis that the three elements of paragraph 4(a) of the Policy are deemed satisfied; or (c) analysed whether three elements are satisfied on the evidence if the respondent’s consent does not involve admission of the complainant’s rights or there is some reason to doubt the genuineness of the consent.
In Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190, the panel found that option (a) above may be appropriate where the complainant agrees to the respondent’s consent or the case is particularly complex. Those circumstances do not apply here. The panel also found that option (b) was inappropriate where the respondent explicitly denies admission of the elements, as is the case here.
Option (c) above is appropriate in this case as the Respondent has not admitted the Complainant’s rights in the disputed domain name, and there is reason to doubt the genuineness of the Respondent’s consent.
In cases in which the respondent appeared to be engaged in a pattern of registering domain names that are confusingly similar to a trade mark in which the respondent has no rights, and then attempting to avoid or delay a decision on the merits, panels have found a decision on the merits is warranted.
These above-mentioned cases against the Respondent provide a reason to believe that it will continue to make abusive registrations of other domain names in the future. In a number of these cases, the Respondent has sought to unilaterally consent to transfer, seemingly to avoid an adverse judgment against it.
Furthermore, a number of panels have taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to what it paid for. Complainant maintains it has paid the requisite fee and is entitled to a decision on the merits.
6. Discussion and Findings
A. Supplemental Filing
The Complainant has made an unsolicited supplemental filing.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
In this case, the purpose of the Complainant’s supplemental filing was to respond to the “consent to transfer” issue, which was the main focus of the Response. This was not a matter which the Complainant could reasonably have anticipated when it filed the Complaint. Accordingly, the Panel has decided to admit the supplemental filing. The Panel did not consider it necessary to give the Respondent an additional opportunity to reply to the filing because its Response had already addressed the “consent to transfer” issue extensively.
B. Consent to Transfer
As mentioned above, the Respondent consents to transfer of the disputed domain name to the Complainant and requests that this be ordered without any other findings or conclusions as to paragraph 4(a) of the Policy.
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) considers whether a UDRP panel can decide a case based on a respondent’s consent to transfer:
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent’s consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”
The Panel has decided to proceed to a substantive determination for the following reasons:
1. The Respondent has not conceded that the three elements of paragraph 4(a) have been satisfied; on the contrary, the Respondent specifically denies fault or liability.
2. The Complainant has not agreed to a consent decision.
3. There is a question mark over the genuineness of the Respondent’s consent. The Complainant has identified a series of UDRP cases in which the Respondent has been found to have registered and used domain names in bad faith. The Complainant further asserts that the Respondent uses slightly different registrant names to avoid being discovered as a serial cybersquatter. While the Respondent claims generally that it acquires and holds domain names in high volume “through lawful and fair methods”, the Respondent does not specifically deny the Complainant’s assertions or that it is connected with those cases. The Panel also notes that, in many of the cases, the Respondent also requested that transfer be ordered without findings as to the merits. All of this gives rise to the suspicion that the Respondent’s motivation is not, as it claims, to avoid the Panel wasting time and resources on an undisputed matter but, rather, to minimise its negative UDRP track record.
4. The Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent in this case, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels, e.g., in connection with assessment of patterns of conduct under paragraph 4(b)(iii) of the Policy.
5. Finally, in the Panel’s view, the Complainant is entitled to a decision for which it has paid in filing the Complaint.
C. Identical or Confusingly Similar
The Complainant has rights in the mark MY PATRIOT SUPPLY by virtue of its registered trade marks for that term.
The disputed domain name is confusingly similar to the trade mark as it is an obvious misspelling thereof, simply omitting the final “y”. The overall impression remains the same. The domain name suffix can be disregarded for the purpose of the comparison.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded (see below) that the disputed domain name has been used for a parking page with links to goods which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services” … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In this case, the advertising links are clearly related to the trade mark value of the invented phrase “My Patriot Supply”.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
E. Registered and Used in Bad Faith
The Respondent claims that it had never heard of the Complainant. However, the Panel is sceptical given that the disputed domain name is a typosquatting variation of the Complainant’s distinctive trade mark and that it has been used for a parking page with links to products relating to the Complainant’s industry.
The Panel also takes into account the fact that, as mentioned above, the Respondent has been found to have registered and used domain names in bad faith in multiple previous cases under the Policy including American Woodmark Corporation v. Domain Registries Foundation / Domain May Be For Sale, Check Afternic.Com, Domain Admin, WIPO Case No. D2016-0321; Vente-Privee.com, Vente-Privee.com IP S.à.r.l. v. Domain Admin, WhoIs Foundation, Domain Registries Foundation care of Legal Consulting and Incorporations, WIPO Case No. D2015-1945; BHP Billiton Innovation Pty Ltd. v. Domain Admin, c/o Legal Consulting & Incorporations / WhoIs Foundation, WIPO Case No. D2014-2060.
Paragraph 3.8 of WIPO Overview 2.0 makes clear that a domain name registrant will normally be deemed responsible for content appearing on a website at the disputed domain name, even if such registrant may not be exercising direct control over such content — for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third party trade marks. No such good faith steps have been demonstrated in this case.
For the above reasons, that Panel considers that paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a parking page with links to products relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element 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 <mypatriotsuppl.com> be transferred to the Complainant.
Date: September 7, 2016