WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
XP Innovation, LLC v. Sabrina McEvoy and Time 2 Shine Enterprises, LLC
Case No. D2014-0783
1. The Parties
Complainant is XP Innovation, LLC, of Mount Vernon, Indiana, United States of America (“US”), represented by Faegre Baker Daniels LLP, US.
Respondents are Sabrina McEvoy and Time 2 Shine Enterprises, LLC, of Inwood, West Virginia, US.
2. The Domain Names and Registrar
The disputed domain names, <danscomp.org>, <dans360.net>, and <dans360.org>, are registered with GoDaddy.com, LLC (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 12, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 13, 2014, the Registrar transmitted by email to the Center its verification response confirming Time 2 Shine Enterprises, LLC as the registrant1 and providing contact information and other details of the registrations.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 May 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 11, 2014. On the same day, Respondent sent an email to the Center stating that it had responded and inquiring whether the response could be sent directly to the Center’s representative. On June 12, 2014, the Center replied, indicating that it had not received any response within the Response due date and that it would be up to the Panel to consider any response later submitted.
The Center appointed Debra J. Stanek as the sole panelist in this matter on June 26, 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.
At the Panel’s request, the Center has confirmed that after conducting a search of email communications that it has received, including communications from Respondent’s email address, it has not located any reply from Respondent.
4. Factual Background
Complainant operates an online store at the domain name <danscomp.com> that features bicycles and related items, such as clothing, parts, and accessories. It owns two US federal trademark registrations for the mark DAN’S COMP in a stylized typeface; the earliest of these issued in 2002 and claims a date of first use of 1997. Complainant also uses, and owns two US federal trademark registrations for, the mark DANS 360, for news and information relating to bicycles and shirts. These registrations issued in 2010 and 2011 and claim dates of first use in 2009.
The <danscomp.com> domain name was registered in December 2012. At some time in 2013, visitors to <danscomp.org> were redirected to “www.time2shinebmx.com”, which sells bicycles and parts and accessories in competition with Complainant. Complainant objected and the redirect was apparently discontinued for a period. Respondent subsequently offered to sell the domain name to Complainant for USD 5,000.00 and registered the disputed domain names <dans360.com> and <dans360.net> in April 2014. Those domain names apparently resolve to the Registrar’s “parking” page.
5. Parties’ Contentions
Complainant provided the declaration of its Chief Technology Officer in support of many of the allegations of the Complaint.
1. Identical or Confusingly Similar
The disputed domain name <danscomp.org> is virtually identical to Complainant’s DAN’S COMP marks and the disputed <dans360.org> and <dans360.net> are virtually identical to its DANS360 marks. The only differences involve the addition of the generic Top-Level Domains (“gTLD”) “.org” and “.net,” which do nothing to distinguish the domain names from Complainant’s marks.
2. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain names. It does not appear to be known as “danscomp” or “dans360.”
Respondent’s use of the domain names to direct visitors to its own website, which provides goods and services similar to those offered by Complainant, is not a bona fide offering of goods or services.
Complainant has not authorized Respondent to use its marks.
3. Registered and Used in Bad Faith
Respondent had no trademark or intellectual property rights in the disputed domain names at the time that it registered them.
In response to Complainant’s offer to purchase the domain names, Respondent demanded USD 5,000.00. Respondent did not provide any evidence that its out-of-pocket expenses exceeded USD 5,000.00 per domain name. Complainant does not believe that Respondent spent that much to acquire each domain name.
Respondent registered the domain name <danscomp.org> primarily to disrupt Complainant’s business, as evidenced by the fact that Respondent redirected visitors to its own website at “www.time2shinebmx.com.” This also constitutes use of the domain name to attract visitors to Respondent’s website for commercial gain. The fact that Respondent subsequenlty discontinued redirecting visitors does not legitimize the bad faith registration and use.
Respondent registered the two “dans360” domain names on the same day that Complainant contacted it objecting to the use of <danscomp.org> to redirect visitors to Respondent’s website. After Complainant refused Respondent’s offer to sell the <danscomp.org> domain name for USD 5,000.00, Respondent replied:
“Your attorney’s [sic] can not force us to do anything with the domain name. I own it. Period. I can sit on it for the rest of my life like I will with dans360.net, and .org as well. We have attorney’s [sic] as well, not just you or your company. Cyber squatting [sic] is illegal, and it was wrong for me to do that, and I removed it upon your 1st request.
You can make an offer on the domain names if you like. I will consider, but it needs to be extremely close to $5,000/per.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, a complainant must prove, as to each disputed domain name, that:
(i) it is identical or confusingly similar to a mark in which the complainant has rights.
(ii) the respondent has no rights or legitimate interests in respect to it.
(iii) it has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use. See Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the marks DAN’S COMP and DANS360 by virtue of the evidence of its US federal trademark registrations.
Each of the disputed domain names is virtually identical to one of Complainant’s marks. The <danscomp.org> domain name differs only as to the deletion of an apostrophe and a space and the addition of the gTLD. The <dans360.org> and <dans360.net> domain names differ only as to the additon of the gTLD.
The differences due to spacing, punctuation, and the gTLD are not relevant for purposes of this comparison.
The Panel finds that each of the disputed domain names is identical or confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after a complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
It does not appear, from the WhoIs record, or other information in the case file, that Respondent (whether deemed to Sabrina McEvoy or Time 2 Shine Enterprises, LLC) is commonly known by any of the domain names.
Use of the <danscomp.org> domain name to redirect visitors to Respondent’s website is not a use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Likewise, under these circumstances, Respondent’s use of the other two domain names, apparently to generate “click through” revenue (whether for Registrar, Respondent, or both) by redirecting visitors to other web sites through links made available on the pages is not a bona fide offering or legitimate noncommercial or fair use.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in each of the disputed domain names.
C. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith. See Policy, paragraph 4(b)(i)-(iv):
(i) Registering the domain name primarily to sell it for more than documented out-of-pocket costs to the complainant or one of its competitors.
(ii) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct.
(iii) Registering the domain name primarily to disrupt the business of a competitor.
(iv) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [respondent’s] web site or location.
Complainant’s rights in its DAN’S COMP and DANS360 marks long predate the registration of the disputed domain names. Complainant and Respondent are competitors and the Panel concludes that Respondent likely knew of Complainant and its marks when it registered <danscomp.org> and actually did when registering <dans360.net> and <dans360.org> after Complainant’s objection regarding <danscomp.org>. The Panel finds that Respondent was using the disputed domain names to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark when it redirected the disputed domain names to its own website and pay-per-click parking pages. Under the facts and circumstances presented here, the Panel concludes that Respondent registered and is using each of the disputed domain names in bad faith.
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 names <danscomp.org>, <dans360.net>, and <dans360.org> be transferred to Complainant.
Debra J. Stanek
Date: July 9, 2014
1 The Complaint named both Sabrina McEvoy, identified in the WhoIs record as “Registrant Name” and Time 2 Shine Enterprises, LLC, identified as “Registrant Organization.” The Registrar indicated that it viewed the Registrant Organization as the owner of the domain name. For purposes of this proceeding, the Panel refers to both, collectively, as Respondent.