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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shop Smart LLC v. Whois Privacy Corp, Domain Admin / Ryan G Foo, PPA Media Services

Case No. D2015-0173

1. The Parties

The Complainant is Shop Smart LLC of Chicago, Illinois, United States of America, internally represented.

The Respondent is Whois Privacy Corp, Domain Admin of Nassau, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile.

2. The Domain Name and Registrar

The disputed domain name <braddeals.com> is registered with Internet.bs Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2015. On February 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 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 February 9, 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 February 9, 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 February 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2015.

The Center appointed Alistair Payne as the sole panelist in this matter on March 13, 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.

On March 30, 2015, the Panel issued an Administrative Procedural Order requesting further information and/or evidence from the Complainant clarifying when it commenced its business under the trade mark BRAD'S DEALS and the extent of use since that date. The due date for the Decision was extended until April 20, 2015.

The Complainant filed 2 emails by way of submission in response to the Panel's Administrative Procedural Order on April 2, 2015. The Respondent did not file a response.

4. Factual Background

The Complainant operates a business in the United States that provides a service that assists people in making purchasing decisions by offering special promotional deals and coupons through its website at "www.bradsdeals.com". The Complainant owns United States trade mark registration number 4,532,211 for the word mark BRAD'S DEALS which was registered on May 20, 2014 and filed on May 16, 2013, with a first use in commerce date in 2001.

The disputed domain name was registered on February 20, 2007.

5. Parties' Contentions

A. Complainant

The Complainant submits that it owns a word mark registration in the United States for BRAD'S DEALS as noted above and that the disputed domain name is confusingly similar to this mark.

The Complainant says that there is no evidence in the 8 years since the Respondent registered the disputed domain name of the Respondent's use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. In addition, the Complainant says that the Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial use of it.

As far as bad faith is concerned the Complainant says that by owning the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's website or other on-line 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 its services.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for the word mark BRAD'S DEALS. The disputed domain name differs from the said mark by the omission of the apostrophe and the letter "s" but the overall impression given by the disputed domain name and the Complainant's mark is of overall visual, aural and conceptual similarity. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trade mark.

B. Rights or Legitimate Interests

The onus is upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not known by the disputed domain name or any similar name and has neither made any use of the disputed domain name, nor demonstrable preparations to use it, in the 8 years since the Respondent originally registered the disputed domain name. Neither, says the Complainant, is the Respondent making a legitimate noncommercial use of the disputed domain name.

There is no evidence before the Panel of the disputed domain name resolving to a website, or even to a placekeeper site. It appears to the Panel based on the submissions made by the Complainant that the Respondent has not used the disputed domain name. In circumstances that the Respondent has not provided evidence of its use of the disputed domain name, or of a similar name or mark, or a justification for its registration or interest in the disputed domain name, the Panel finds that the Complainant has made out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has not rebutted the Complainant's case, the Complaint succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

Under the Policy the disputed domain name must be shown to be both registered and used in bad faith.

The disputed domain name appears to have been originally registered on February 20, 2007. The Complainant maintains that although it did not file its trade mark application in the United States until 2013, it had used its BRAD'S DEALS mark in its domain name <bradsdeals.com> and on the website to which this domain name resolved since 2001, which was also the stated date of "first use in commerce" for its mark. The Complainant also provided evidence by way of a Wayback Machine screen shot that its website was in existence at least 18 months prior to the Respondent's registration of the disputed domain name. This evidence has not been challenged by the Respondent and the Panel therefore accepts that the Complainant was using its BRAD'S DEALS mark on its website at "www.bradsdeals.com" well prior to the Respondent's registration of the disputed domain name.

As noted in relation to the first element of the Policy, the substantive part of the disputed domain name differs from the Complainant's mark only by the omission of the apostrophe and the letter "s". The Panel considers that the Complainant's BRAD'S DEALS mark is quite distinctive and that it is unlikely that the Respondent chose the disputed domain name independently and by coincidence. In this regard, it is notable that "Braddeals" does not make sense in English and is not an obvious choice for a mark or domain name. Considering the similarity of the disputed domain name to the Complainant's mark and in all the circumstances, it seems to the Panel more likely than not on the balance of probabilities that by the date of registration of the disputed domain name, the Respondent was aware of the Complainant's mark and website and chose the disputed domain name purposefully and with knowledge of the Complainant's BRAD'S DEALS mark, domain name and website. The Panel notes that it's inference that the Respondent registered the disputed domain name in bad faith is only reinforced by the fact that the Respondent has been the losing party in at least 36 sets of prior UDRP proceedings filed with the Center and this fact also informs its finding in relation to use in bad faith.

The Panel notes that the Respondent has not actively used the disputed domain name to resolve to website and neither is there evidence that it has attempted to sell it at a profit or to extort large sums from the Complainant. In circumstances that a respondent has made a passive holding of a disputed domain name, the consensus view of other UDRP panels as noted at paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition("WIPO Overview 2.0") is that panels must consider all of the factors present to determine whether the disputed domain name is being held in bad faith.

Although there is no evidence before the Panel to suggest that the Complainant's mark is very well known or reputed, it is apparent that the Complainant has used it for a substantial period of time for its promotional deals business. As noted above, it seems to the Panel more likely than not on the balance of probabilities that the Respondent registered the disputed domain name with knowledge and purposefully chose it as a variant of the Complainant's mark and domain name. It is quite possible that the Respondent sought to eventually use it or to sell it to someone who would use it for circumstances amounting to typo-squatting.

On its own, the Panel does not consider that this would be sufficient to support a finding of use in bad faith on the basis of passive use(compare for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), however the present case is exceptional because of the concerted and consistent history of the Respondent's past conduct as a serial cybersquatter (as noted by previous UDRP panels and in particular the panel in EasyGroup IP Licensing Limited v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, WIPO Case No. D2012-1093. The Panel notes that there are now at least 36 past findings of bad faith against Mr. Ryan. G. Foo which have resulted in transfer of the disputed domain name in each case. This coupled with the Respondent's total failure to explain its reasons or to even attempt to justify its registration of the disputed domain name, even after having effectively been given two opportunities to do so only reinforces the Panel's view under this element of the Policy. In the Panel's view, these exceptional circumstances justify an inference that the disputed domain name has been held passively in bad faith.

As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint succeeds under the third element 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 domain name <braddeals.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: April 14, 2015.

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