WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Slickdeals, LLC v. PrivacyGuardian.org / fu liu
Case No. D2019-1310
1. The Parties
The Complainant is Slickdeals, LLC, United States of America (“United States”), represented by Latham & Watkins LLP, United States.
The Respondent is PrivacyGuardian.org, United States / fu liu, China.
2. The Domain Name and Registrar
The disputed domain name <slickdeals.tech> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, 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 June 19, 2019, 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 June 20, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2019.
The Center appointed Douglas Clark as the sole panelist in this matter on July 22, 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 was founded in 1999. It provides Internet users a platform to browse online deals through its “www.slickdeals.net” website.
The Complainant is the owner of various SLICKDEALS trademarks in numerous jurisdictions including Chinese trademark registration no. 17483113A (registered on October 14, 2016) and United States trademark registration no. 3416831 (registered on April 29, 2008).
The Respondent is an individual based in China.
The disputed domain name was registered on November 24, 2017. The disputed domain name resolves to a page that is an online platform which appears to be a Chinese version of the Complainant’s website. At the top of the page, it bears a SLICKDEALS mark with additional Chinese words “中文爱好者社区”, which translates roughly “Chinese language fan community area”. One subpage headed “About Slickdeals” provides information about the Complainant. The website under the disputed domain, however, also provides links to a competitor of the Complainant Cashbackbase. Nowhere on the website is the Respondent’s relationship to the Complainant explained.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <slickdeals.tech> and the trademark SLICKDEALS identical. The disputed domain name contains the Complainant’s trademark SLICKDEALS in its entirety. The generic Top-Level Domain (“gTLD”) can be ignored for the purposes of comparison.
No rights or legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for “Slickdeals”. Further it uses the disputed domain name to promote competitors of the Complainant. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the SLICKDEALS trademark given its worldwide reputation and the fact that the Respondent copied and used a stylized version of SLICKDEALS trademark and included vast amounts of information about the Complainant and its services on the disputed domain name. The Respondent is using the disputed domain name to attempt to attract consumers to its site for commercial gain as evidenced by the fact that it uses Complainant’s stylized mark and offers information about Complainant’s services, but then prominently advertises the competing services of others in an attempt to profit from this misdirection and siphoning away of users interested in Complainant’s services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <slickdeals.tech> is identical to the Complainant’s trademark. The disputed domain name is made up of the Complainant’s SLICKDEALS mark with the gTLD “.tech”. The disputed domain name is therefore identical to the Complainant’s registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has no business or any kind of relationships (i.e. licensor, distributor) with the Complainant. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name resolves to a page that advertises the Complainant’s services. In principle, it is not an illegitimate use of a trademark to promote the services of another by reference to the other person’s mark.
However, in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, the panel in that case held that to be bona fide within the meaning paragraph 4(c)(i), the offering should meet the following requirements:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- The site must accurately disclose the registrant’s relationship with the trademark owners; it may not, for example, false suggest that it is the trademark owner, or that the website is the official site; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case the Respondent does not meet, at least, the second and third requirements set out above. The website under the disputed domain name offers links to services of competitors of the Complainant and it does not accurately disclose its relationship with the Complainant.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <slickdeals.tech> was registered in bad faith and is being used in bad faith. The Respondent clearly knew of the Complainant when registering the disputed domain name. This is made clear by the use of the disputed domain name to promote the Complainant’s services. The Respondent’s intention can only have been to attract, for commercial gain, Internet users to the webpage, by creating a likelihood of confusion with the Complainant’s mark of the service of the website. Such registration and use falls into paragraph 4(b)(iv) of the Policy.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <slickdeals.tech> be transferred to the Complainant.
Date: August 7, 2019