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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CouponCabin LLC v. Domain Administrator, Quality Hosting

Case No. D2019-3117

1. The Parties

The Complainant is CouponCabin LLC, United States of America (“United States”), represented by Scott Kluth, United States.

The Respondent is Domain Administrator, Quality Hosting, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <couponcabinet.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 December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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 December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on January 30, 2020. 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 operates a business based in the United States through a website at <couponcabin.com> from which it provides links to online discounts and coupons and opportunities for online cash back. The Complainant owns multiple registrations for the COUPONCABIN Marks in the United States. These include United States registration number 3,666,660 for COUPON CABIN, registered on August 11, 2009; United States registration number 3,666,710 for COUPONCABIN.COM, registered on August 11, 2009; and United States registration number 4,509,905 for COUPONCABIN, registered on April 8, 2014 (collectively referred to as the “COUPONCABIN” marks).

The disputed domain name was registered on March 11, 2010 and recently has been automatically re-directing to the website of a competitor of the Complainant, or to a page that asks customers to click through to a browser extension featuring stylistic elements that the Complainant alleges are particular to its website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name wholly incorporates the COUPONCABIN mark. It says that the only difference between the disputed domain name and its mark is the addition of the letters “net” after “coupon cabin” which it suggests is calculated to mislead Internet users and capitalize upon their potential confusion. As a result, says the Complainant, the disputed domain name is confusingly similar to its COUPONCABIN mark.

The Complainant submits that it has used the COUPONCABIN mark in the United States since at least 2002 and that its first trade mark registration predates the registration of the disputed domain name. It says that the Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, whether express or implied, to use the COUPONCABIN Marks in a domain name or in any other manner. It says further that the Complainant does not sponsor or endorse the Respondent’s usage of the COUPONCABIN Marks in connection with the disputed domain name.

The Complainant asserts that in recent days leading up to the date of this Complaint, the disputed domain name has either (i) automatically redirected to a competitor site of Complainant or (ii) resolved to a page that asks customers to click through to install a browser extension, with a box and button that use an identical font, color scheme and other stylistic elements particular to the Complainant’s website. The Complainant says that it is well-established that operating a parking page or causing a redirection using a distinctive trade mark in a domain name, and providing a connection to goods and/or services that compete with the trade mark owner’s does not establish rights or legitimate interests. Therefore, says the Complainant the Respondent cannot claim to be making a legitimate noncommercial or fair use of the Complainant’s mark.

The Complainant submits that the Respondent knew of and sought to capitalize from the fame and value of the COUPONCABIN Marks, and the high traffic domain name <couponcabin.com> when it registered the disputed domain name. It says that in the circumstances that the disputed domain name diverts to a competitor’s site or to a re-direction page with get-up similar to the Complainant’s, the disputed domain name could not have been chosen for any other reason than to attract users of the Complainant’s services or customers who have a familiarity with the Complainant’s marks, such as those seeking the Complainant’s high traffic domain name <couponcabin.com>.

The Complainant notes that the disputed domain name itself has no connection with, or relation to, any services or any business or other enterprise found on the page it redirects to, namely the website of a third party in direct competition with Complainant and neither does the Respondent have a website that refers in any way to the disputed domain name. In fact, the Respondent has no website to speak of, and either redirects users straight to a direct competitor of the Complainant or asks the user to click through to a web store to buy a browser extension.

As far as use in bad faith is concerned, the Complainant goes on to submit that the Respondent has intentionally sought to use the COUPONCABIN Marks to divert users ultimately to a third party competitor of the Respondent by using a domain name that is confusingly similar to the COUPONCABIN marks and the high traffic domain name <couponcabin.com>. It asserts that the Respondent has used the Complainant’s marks to confuse Internet users as to sponsorship of or affiliation with the website or webpage to which it diverts consumers and that this is for commercial gain. The Complainant says that this clearly constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In addition, the Complainant asserts that the Respondent’s use of a privacy shield to mask its identity is further evidence of bad faith.

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 in the COUPONCABIN Marks and in particular in United States registration number 3,666,660 for COUPON CABIN, registered on August 11, 2009. The disputed domain name wholly contains the Complainant’s COUPON CABIN mark and is identical to it with the exception of the letters “net”. As a result of the wholesale incorporation of the Complainant’s mark in the disputed domain name the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, whether express or implied, to use the COUPONCABIN Marks in a domain name or in any other manner. It says further that the Complainant does not sponsor or endorse the Respondent’s usage of the COUPONCABIN Marks in connection with the disputed domain name. There is no evidence that the Respondent operates its own business from the disputed domain name.

In addition, the Complainant says that it was using the COUPONCABIN Marks long before the registration of the disputed domain name and obtained registered rights in the United States prior to the registration. In the circumstances that the disputed domain name has been diverted to a competitor’s site, or to a page with get-up similar to its own, the Complainant asserts that the disputed domain name could not have been chosen by the Respondent for any other reason than to attract users of the Complainant’s services or customers who have a familiarity with the Complainant’s marks, such as those seeking the Complainant’s high traffic domain name <couponcabin.com>.

The Panel finds that the Respondent has made out a prima facie case that the Complainant has no rights or legitimate interests in the disputed domain name and that the Respondent has failed to rebut that case. For this reason and considering the Respondent’s use in bad faith of the disputed domain name, as described in section C below, the Panel finds that the Complaint also succeeds under this limb of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name in March 2010 some 7 months after the Complainant’s first United States registration but approximately 8 years after the Complainant says that it commenced its business under <couponcabin.com> with a first use date noted in trade mark registration 3,666,660 of February 26, 2002. Considering the Respondent’s timing, that the expression “couponcabin” is a coined expression that is not commonly used in English and that the Respondent subsequently and as further discussed below, appears to have re-directed the disputed domain name to the website of a competitor of the Complainant, the Panel finds that it is most likely that the Respondent was aware of the Complainant’s mark and business when it registered the disputed domain name but did so for its own commercial purposes.

The Respondent has used the disputed domain name to divert Internet users to the web page of one of the Respondent’s competitors or to a click though box on another webpage that the Complainant says mimics the font and colour and stylistic elements of the Complainant’s website. Although the Panel is not persuaded by the evidence on record that the click box webpage mimics the get-up or style of the Complainant’s website, it is clear that where Internet users are diverted to the third party’s website that they are diverted to a competing business to that of the Complainant. The panel finds that it is most likely that the Respondent is facilitating this diversion for its own commercial purposes.

The Panel accepts the Complainant’s submission that such use amounts to intentionally attempting to divert for commercial gain, internet users to a competing third party’s website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or sponsorship of the that website in terms of paragraph 4(b)(iv) of the Policy and that this amounts to evidence of registration and use of the disputed domain name in bad faith.

For these reasons the Panel finds that the Complaint also succeeds under this 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 disputed domain name <couponcabinet.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: February 11, 2020

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