WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Convergys CMG Utah Inc. v. Registration Private, Domains By Proxy, LLC / Ics inc
Case No. DCO2015-0019
1. The Parties
The Complainant is Convergys CMG Utah Inc. of Cincinnati, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Ics inc of Grand Cayman, Cayman Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <convergys.co> 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 May 29, 2015. On May 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2015, the Registrar 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 the Complainant on June 5, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 8, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on June 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 10, 2015. 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 or its predecessors-in-interest have been engaged in the business of providing computer related technology and employee administration support services to businesses worldwide for the last 30 years under the CONVERGYS trademark.
The Complainant, by itself and through its licensed affiliates and subsidiaries, has used the registered trademark, CONVERGYS, the subject of the present Complaint, since its inception in 1998. The trademark was first registered in 2001 and consists of a coined term with no common meaning.
At the time of filing the Complaint, the disputed domain name featured a pay-per-click (PPC) website.
The disputed domain name was registered on April 21, 2013.
5. Parties’ Contentions
The Complainant is the owner of the CONVERGYS trademark worldwide; among others, it owns a registered trademark in the United States. The trademark has been in use since 1998.
The Complaint states that the Respondent is using the disputed domain name as a placeholder with a category of links titled “Related Links” that contain such headings as “Convergys Call Center”, “At Home Job Opportunities” and “Convergys Careers” with PPC links to pages containing sponsored listings and ads.
The Complainant sent a letter to the Respondent demanding that the Respondent cease use and ownership of the disputed domain name and transfer the disputed domain name to the Complainant. The letter was not answered.
The Complainant alleges that the Respondent registered the disputed domain name in an effort to capitalize on the recognition of the Complainant’s trademark by those seeking products and services related to computer related technology and employee administration support services.
The complaint also states that the Respondent’s use of the Complainant’s trademark to generate revenue is a PPC advertising scheme, a type of use that has been recognized by UDRP panels as a classic illustration of bad faith use. It adds that in addition the Respondent has listed the disputed domain name for sale at a price of USD 2,059. Such sale price is in excess of any documented out-of-pocket costs.
The Complaint states that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated in any manner to the Complainant and has never been authorized to use the registered trademark of the Complainant.
The Complainant states that the Respondent registered the disputed domain name on April 21, 2013, long after the Complainant’s trademark became a famous trademark and after the Respondent knew of the Complainant’s superior and prior rights.
Finally the Complainant alleges that the Respondent has engaged in a pattern of registering domain names that are either identical or bear striking resemblance to the trademark rights of others, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy. The Complainant attaches a list of all those cases involving the Respondent as Annex F of the Complaint and concludes that such a pattern of conduct clearly demonstrates bad faith on the part of the Respondent.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has the burden under paragraph 4(a) of the Policy to prove:
(i) that 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) 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 Panel has been able to verify that the Complainant owns registered trademark rights in the trademark CONVERGYS and that such rights predate the registration by the Respondent of the disputed domain name.
The disputed domain name is identical to the trademark owned by the Complainant. It is well-established that elements such as “.co” may be disregarded in determining identity or confusing similarity.
Thus, the Complainant has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
If the Respondent demonstrates any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. Indeed, it is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1, “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 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”.
In the present case the Respondent failed to submit a Response. Considering the evidence in the Complaint and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and that the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark in a domain name or in any other manner, the Panel concludes that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, so that the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, it shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, 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 location or of a product or service on the Respondent’s website or location.”
In this matter, the Panel is satisfied, principally from the facts and the evidence, that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any legitimate reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation. The trademark is a coined term with no common meaning.
In addition the disputed domain name is listed for sale at a price of USD 2,059. Such sale price is in excess of any documented out-of-pocket costs.
The Panel also takes into account, as a further indicia of bad faith, the result of a search performed in the WIPO database of UDRP decisions showing that the Respondent, “ICS Inc”, was a respondent to some 72 prior UDRP cases. In all those cases the result was a finding of bad faith registration and use of those domain names.
The Panel further notes that the disputed domain name contains PPC advertising mainly related to the Complainant’s field of activity. The Respondent’s use of the Complainant’s trademark to generate revenue in a PPC advertising scheme is a situation covered by paragraph 4(b)(iv) of the Policy.
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 <convergys.co> be transferred to the Complainant.
Pablo A. Palazzi
Date: July 24, 2015