WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Safelite Group, Inc. v. Shruti Yadav
Case No. D2019-0018
1. The Parties
The Complainant is Safelite Group, Inc. of Columbus, Ohio, United States of America (“United States” or “U.S.”), represented by Ice Miller LLP, United States.
The Respondent is Shruti Yadav of Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <safelitepromo.com> 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 January 3, 2019. On January 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2019, 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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2019.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on February 5, 2019. 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 in this matter is the owner of U.S. Trademark Registration No. 2,242,375 for the SAFELITE mark, registered on May 4, 1994, and U.S. Trademark Registration Nos. 2,362,327; 2,689,916; 2,512,458, 2,703,017; 4,013,173; 4,182,558; 4,591,390; 5,276,731; and, 5,628,444, for other trademarks and logos that include “Safelite” or feature “Safelite”.
The Complainant has been using the mark SAFELITE since at least 1951 in relation to glass installation services for automotive vehicles and the sale of automotive vehicle glass installation goods, and retail store services featuring automobile glass products. It has expended significant sums in advertising and promoting its services by reference to the SAFELITE mark, by means of television, radio, newspaper, magazine, email, and Internet advertisements.
The Complainant also owns the domain name <safelite.com>, which it uses to provide its services and goods in connection with the SAFELITE mark.
The disputed domain name was registered on March 17, 2018.
The disputed domain name is used in relation to a website that offers falsified coupons for services purported to be from the Complainant.
5. Parties’ Contentions
The Complainant points out that the disputed domain name contains the entirety of the unique SAFELITE mark plus the term “promo.” The Complainant contends that a disputed domain name is confusingly similar to a mark when it includes that mark, regardless of any additional terms also incorporated. When a domain name registrant merely adds a generic or descriptive term to a trademark, the result is said to be confusing similarity in almost all cases.
The Complainant asserts that the website to which the disputed domain name resolves repeatedly displays “Safelite Auto Glass Coupon Codes 2018,” or “Safelite Promo Code AAA Jan.2019,” and includes the Complainant’s trademarks, logos, and proprietary images. It also includes statements referring to Safelite services, such as: “to apply the Safelite Glass Promo Code at the checkout and your discount will automatically add to your order”. According to the Complainant, the relevant website falsely claims to offer coupons for Safelite services, when in fact such coupons or services are not offered by the Complainant, and are not authorized by or otherwise related to the Complainant. This does not amount to a bona fide use within the meaning of the Policy, it is said.
Further, the Complainant points out that the Respondent is not commonly known by the disputed domain name and has no intellectual property rights in it. Because of its trademark registrations and use of the SAFELITE trademark, the Complainant is the entity that has been commonly associated with the terms in the disputed domain name. Further, the Respondent has not been granted any permission or license to use the SAFELITE trademarks, nor is the Respondent in any way affiliated with the Complainant. The Respondent is also not “making a legitimate noncommercial or fair use of the domain name” within the meaning of the Policy.
According to the Complainant, the Respondent selected the disputed domain name with knowledge of the Complainant’s rights and in bad faith in order to capitalize on the goodwill associated with the SAFELITE mark. The disputed domain name is the SAFELITE mark with the term “promo” added, and the website to which it resolves repetitively states, “Safelite Auto Glass Coupon Codes 2018,” or “Safelite Promo Code AAA Jan.2019,” and includes the use of the Complainant’s trademarks, logos, and proprietary images. It also includes statements referring to Safelite services, including: “to apply the Safelite Glass Promo Code at the checkout and your discount will automatically add to your order”. As indicated above, the Complainant says that the relevant website offers purported coupons for Safelite services, when in fact these coupons and services are not licensed, offered, authorized by, or otherwise associated with the Complainant. The relevant website also misrepresents links to the Complainant’s webpage (“safelite.com”), when in fact those links simply redirect back to the website at the disputed domain name itself. Therefore, according to the Complainant, the Respondent’s conduct is said to constitute bad faith. The Respondent registered and used the disputed domain name to wrongfully benefit from the Complainant’s reputation by diverting users seeking Safelite services and coupons to the Respondent’s website, which then provides users with the abovementioned falsified coupons for the Complainant’s services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the SAFELITE trademark of the Complainant. However, the mark is clearly recognizable within the disputed domain name. The term “promo”, which is added to the disputed domain name, does not prevent a finding of confusing similarity with the Complainant’s SAFELITE trademark. See section 1.8 of the WIPO Overview on WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has not filed a Response and has not asserted any rights or legitimate interests in the disputed domain name, nor is it licensed or authorized to use the SAFELITE trademark in any way. The Respondent is not known by and does not do legitimate business by reference to the term “Safelite” or “Safelitepromo”. The Respondent has in fact reproduced proprietary elements of the Complainant’s business and its trademark on the website to which the disputed domain name resolves. The aim of the Respondent appears to be to mislead Internet users into thinking that there is a legitimate connection between its website and the Complainant. False promotional coupons are offered on the website to further entice consumers. None of this activity is of a kind to vest rights or legitimate interests in the Respondent; rather, it is abusive of the legal rights of the Complainant.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the dispute domain name.
C. Registered and Used in Bad Faith
The Complainant used the SAFELITE trademark in relation to car glass services for a long time prior to registration of the disputed domain name. The trademark is distinctive and the Complainant has invested considerable sums in its promotion and related advertising. The inherent nature of the disputed domain name (the combination with the term “promo”) and the nature of the website to which it resolves, make it very clear that the Respondent was fully aware of the Complainant’s trademark rights at the time of registration. The Respondent then made use of the disputed domain name to set up an imitative and misleading website to deceptively offer discount coupons purporting to be offered by the Complainant. These actions are in bad faith as they rely on deceiving consumers by way of a false association with the Complainant to extract some financial gain from them.
Therefore the Panel holds that the disputed domain name was registered and used 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 name <safelitepromo.com> be transferred to the Complainant.
William A. Van Caenegem
Date: February 19, 2019