WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Preferred Distributing, Inc. v. Domain Administrator, Marketing Express
Case No. D2016-2454
1. The Parties
The Complainant is Preferred Distributing, Inc. of Hudson, Ohio, United States of America (“United States”), represented by Benesch, Friedlander, Coplan & Aronoff, LLP, United States.
The Respondent is Domain Administrator, Marketing Express of West Bay, 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 <leafilter.com> is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2016. On December 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on January 5, 2017. 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 manufactures and sells guards for rain gutters.
The Complainant owns United States trade mark no. 2,618,318 for LEAFILTER, filed April 3, 2001, registered September 10, 2002, in class 19.
The disputed domain name was registered on November 8, 2003.
As of November 29, 2016, the disputed domain name was used for a website which offered the disputed domain name for sale and also contained sponsored links relating to gutter protection products.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s registered trade mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. It cannot demonstrate any of the circumstances enumerated in paragraph 4(c) of the Policy.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent registered the disputed domain name for sale to the Complainant or a competitor. The sponsored links relating to competing products do not constitute a bona fide offering.
The Respondent has not been commonly known by the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Its use is commercial.
The Respondent’s use of the disputed domain name disrupts the Complainant’s business and is likely to cause customer confusion.
The Respondent’s registration of the disputed domain name after the Complainant registered its own mark and its use of the disputed domain name, including the Respondent’s offer to sell the disputed domain name, are evidence that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark LEAFILTER arising from its registered trade mark for that term. The trade mark is identical to the disputed domain name, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“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 disputed domain name has been used for a parking page with links to gutter protection 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 distinctive term “Leafilter”.
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.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.
The Complainant’s trade mark pre-dates registration of the disputed domain name and the Respondent has used the disputed domain name for a website with sponsored links relating to the same kind of products offered by the Complainant.
Furthermore, the Respondent has not come forward to deny the Complainant’s assertions of bad faith.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. 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.
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 <leafilter.com> be transferred to the Complainant.
Date: January 18, 2017