WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shop Smart LLC v. Adam Freeman
Case No. D2017-0027
1. The Parties
The Complainant is Shop Smart LLC of Chicago, Illinois, United States of America (“US”), internally represented.
The Respondent is Adam Freeman of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <brads.deals> (the “Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 11, 2017, 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 January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 16, 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 is a US-based entity that operates a business from its website “www.bradsdeals.com” that offers consumers various discounts and coupons redeemable at third-party retailers. According to the information on the Complainant available on the Complainant’s website, the founder of the Complainant built his first website offering deals in 2001 and changed its branding to Brad’s Deals in 2005. The Complainant launched an iPhone App in 2012 and unveiled a new website design in 2014.
The Complainant is the owner of a US trade mark for the words BRAD’S DEALS (the “BRAD’S DEALS Mark”), for “providing a searchable online advertising website and guide featuring the goods and services of other vendors via the Internet”, registered on May 20, 2014 with a first use in commerce in 2001.
The Domain Name <brads.deals> was registered by the Respondent on August 5, 2015 and redirects to a website (the “Respondent’s Website”) operated by an entity described as “Power Names”. The Respondent’s Website contains the following message “Brads.Deals is owned by Power Names whom invest in great premium domain names with an aim to providing excellent goods and/or services. Sometimes our domain names are for sale so why not contact us using the form below and see if Brads.Deals is for sale.”
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s BRAD’S DEALS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the BRAD’S DEALS Mark, having registered the BRAD’S DEALS Mark in the US. It uses the BRAD’S DEALS Mark in connection with its principal web property, the website “www.bradsdeals.com”, which is well known and receives 140 million website sessions a year. The Domain Name is confusingly similar to the Complainant’s website and BRAD’S DEALS Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. There is no evidence, since the Respondent registered the Domain Name, of the Respondent’s 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. Finally, the Respondent does not own other “names.deals” domain names such as <bobs.deals> or <jims.deals>, neither of which is registered by anyone.
The Domain Name was registered and is being used in bad faith. It is the Complainant’s belief that the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the BRAD’S DEALS Mark, having registrations for the BRAD’S DEALS Mark as a trade mark in the US.
The Domain Name consists of the BRAD’S DEALS Mark in its entirety, other than the removal of the apostrophe and the addition of a single full stop between “brads” and “deals”, both of which are requirements of the existing Domain Name System. While the Top Level Domain (“TLD”) is typically disregarded for purposes of comparison under the first element, UDRP panels have in certain cases taken the TLD into account, when the TLD may itself form part of the relevant trademark (as seen here). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Given that the only differences are minor technical ones, the Panel finds the Domain Name identical, or alternatively confusingly similar, to the Complainant’s BRAD’S DEALS Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 Respondent is not affiliated with the Complainant in any way. It can be inferred from the Complaint (and is unchallenged by the Respondent) that it has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BRAD’S DEALS Mark or a mark similar to the BRAD’S DEALS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or a bona fide offering of goods and services, indeed there is no evidence that the Domain Name has been used for any purpose other than soliciting offers for it to be purchased by third parties.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting 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 its 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 a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the BRAD’S DEALS Mark at the time the Respondent registered the Domain Name. The Complainant has traded under the BRAD’S DEALS Mark for at least ten years at the time of registration, and could easily have been found by a simple Google search. It is highly unlikely (and the Respondent has not offered any possible explanation) that the Respondent chose to register the Domain Name, over available alternatives such as <bobs.deals> or <jims.deals> unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the BRAD’S DEALS Mark.
The Panel notes that the Respondent’s Website indicates that the Respondent is a domain name investment company and invites inquiries to see if the Domain Name is for sale. In circumstances where the Respondent has offered no explanation for the registration of the Domain Name nor has the Domain Name been used in any active manner other than to solicit potential inquiries regarding its sale the Panel finds that circumstances exist indicating that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name. As such the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name <brads.deals> be transferred to the Complainant.
Date: February 20, 2017