WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helpful Things, LLC v. Hedhli, Ghassen
Case No. D2020-0804
1. The Parties
The Complainant is Helpful Things, LLC, United States of America (“United States”), represented by SafeNames Ltd, United Kingdom.
The Respondent is Hedhli, Ghassen, Tunisia.
2. The Domain Names and Registrar
The disputed domain names <doublelist.name>, <doublelist.pro>, and <doublelist.store> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2020, 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 April 15, 2020 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 April 15, 2020.
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 April 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 21, 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 the Doublelist online platform where individuals connect with each other within a safe area. The platform was created in early 2018 and is available at the website associated to the domain name <doublelist.com>, registered by the Complainant on March 23, 2018. This website is currently ranked as the 1,856th most popular website in the United States, and 89 percent of the traffic to it is direct (without the help of a search engine). The total amount of pages viewed on the Complainant’s website between February 18, 2018 and July 24, 2019 amounted to over 7.7 billion, with a bounce rate of 9.34 percent.
The Complainant is the owner of the United States trademark DOUBLELIST with registration No.5926633, registered on December 3, 2019 for services in International Classes 38 and 45.
The Complainant has also registered the domain names <doublelist.at>, <doublelist.es>, <doublelist.nl> and <doublelist.be>.
The disputed domain names were registered on July 19, 2019. The Complainant provided evidence that the disputed domain names resolved to a website that is a replica of the Complainant’s older website and includes a “join now for free” link that redirects visitors to the website at “www.sexfinder.com”, which is a competitor of the Complainant. Currently, the disputed domain names <doublelist.name> and <doublelist.pro> redirect visitors, after displaying a privacy warning, to the website of a Canadian waterproofing company at “www.aandyconstruction.com”, and the disputed domain name <doublelist.store> is inactive.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are identical to the DOUBLELIST trademark, as they incorporate the trademark in its entirety without the addition of other elements. The Complainant notes that the DOUBLELIST trademark was registered on December 3, 2019, but the application for it was filed on May 30, 2019. It asserts that it has common law trademark rights in the DOUBLELIST trademark, which is not a commonly used phrase and has acquired a secondary meaning in relation to the Complainant’s personal ads service.
In support of its contention of having common law rights in the DOUBLELIST trademark, the Complainant submits that since its creation in early 2018, the Doublelist platform and brand have achieved a high recognition, especially when the Craigslist personal ads service was shut down in March 2018. The Complainant’s platform was ranked first in the top seven best new Craigslist Personals Replacements by the website at “www.casualxapp.com”, and the Complainant’s sales of advertising space on the Doublelist website increased more than nine times. According to the Complainant, Internet users have recognized its platform as being one of the top websites for personal ads and the Complainant’s website now receives more than 11 million visitors a month.
The Complainant submits that the Respondent lacks rights and legitimate interests in the disputed domain names, as the Respondent is not commonly known by them and has not registered any trademark for the term “doublelist”, there is no connection between the Parties, and the Respondent has not been authorized by the Complainant to register the disputed domain names and to use them to set up a website that is similar to that of the Complainant.
The Complainant points out that the Respondent is not making a noncommercial or fair use of the disputed domain names, as they resolve to a website that is a replica of the Complainant’s older website and includes a “join now for free” link that redirects visitors to the website at “www.sexfinder.com”, which is a competitor of the Complainant.
The Complainant submits that it sent a cease and desist letter to the Respondent on March 13, 2020, but did not receive a response to it.
The Complainant contends that the Respondent has registered and used the disputed domain names in bad faith. It notes that the DOUBLELIST trademark was created in early 2018, and has gained tremendous reputation and success since its launch, and points out that the disputed domain names were registered over 15 months after the launch of the Complainant’s official website at “www.doublelist.com”. According to the Complainant, when typing the term “doublelist” in a search engine like Google, the Complainant’s website appears as the first hit, while before the launch of the Complainant’s platform, the same term generated no traffic on Google. The Complainant states that the disputed domain names were registered between the time of filing and registration of the DOUBLELIST trademark, but when a trademark is registered, the rights conferred to the trademark owner are effectively back-dated to the filing date.
According to the Complainant, the Respondent has registered and used the disputed domain names with the aim to attract, for commercial gain, Internet users and to create confusion with the Complainant’s DOUBLELIST trademark that its website is associated with the Complainant. The statement on the Respondent’s website that it is a “Craigslist Replacement […] Not affiliated with doublelist.com”, shows that the Respondent was aware of the Complainant and has targeted its DOUBLELIST trademark when it set up its website, the content of which mimics the Complainant’s old official website. The mention of “not affiliated with Doublelist.com”, is insufficient, because before entering the Respondent’s website, Internet users have already been subject to initial interest confusion.
According to the Complainant, the Respondent’s actions may disrupt the Complainant’s business and take unfair advantage of its goodwill, because when clicking on the links on the Respondent’s website, Internet users are redirected to one of the Complainant’s competitors.
Finally, the Complainant submits that the Respondent has engaged in an abusive pattern of conduct, targeting the Complainant’s DOUBLELIST trademark. It notes that WIPO Case No. D2019-2225, Helpful Things, LLC v. Robin Gupta involved similar facts, and this according to the Complainant shows that the Respondents in the two cases are under joint control.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of a disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
The Respondent however did not submit a Response in this proceeding.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the DOUBLELIST trademark. This trademark was registered after the registration of the disputed domain names. As noted in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), while the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
The Complainant also maintains that it has common law rights in the DOUBLELIST trademark arising as a result of its use and promotion by the Complainant in the period starting from the spring of 2018. As summarized in section 1.3 of the WIPO Overview 3.0, to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys. Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.
The Complainant has submitted relevant evidence in this regard. The facts that the number of visitors to its website has reached billions prior to the registration of the disputed domain names and that its revenues have increased about nine times in one year and that its service has been highly ranked by third parties is sufficient to satisfy the Panel that the DOUBLELIST trademark has become a distinctive identifier which consumers have started to associate with the Complainant’s services prior to the registration of the disputed domain names in July 2019.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.name”, “.pro” and “.store” gTLD sections of the disputed domain names.
The relevant part of each of the disputed domain names is therefore “doublelist”, which is identical to the DOUBLELIST trademark.
In view of the above, the Panel finds that the disputed domain names are identical to the DOUBLELIST trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that it has no relationship with the Respondent and has not given permission to it to use the DOUBLELIST trademark, and the Respondent is not known under the disputed domain names and has not used them for noncommercial or bona fide purposes. According to the Complainant, the disputed domain names resolve to a replica of the Complainant’s older website that includes a misleading link that falsely offers visitors a free registration on the website, but instead redirects them to the website of a competitor of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Respondent has not disputed the statements of the Complainant. It has not alleged before the Panel that it has rights or legitimate interests in the disputed domain names and has not submitted any evidence.
The disputed domain names all incorporate the DOUBLELIST trademark without the addition of any other elements and were registered on the same date. As submitted by the Complainant, they have been used in connection with a website that copied the design of the previous version of the Complainant’s website, and included a misleading link to a competitor of the Complainant.
In view of the above, and in the absence of any evidence to the contrary and of any plausible alternative explanation by the Respondent, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of its yet unregistered DOUBLELIST trademark, has registered the disputed domain names in an attempt to exploit this goodwill for commercial gain. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain names.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent registered the disputed domain names more than one year after the Complainant started using the DOUBLELIST trademark for its service, but several months prior to the registration of the same trademark. As discussed in section 3.8.1 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. As an exception to this general proposition, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include, inter alia, the registration of a domain name further to significant media attention or following the complainant’s filing of a trademark application.
The three disputed domain names are identical to the DOUBLELIST trademark and were registered on the same date in July 2019. The Complainant has submitted evidence that they have resolved to a website that copied the design of the previous version of the Complainant’s website and contained a link offering free registration to Internet users but instead redirecting them to the website of a competitor of the Complainant. By the date when the disputed domain names were registered, the Complainant had already operated for about 15 months and had achieved a popularity that attracted billions of visits to its website. At this point in time the Complainant had also filed the application for the registration of the DOUBLELIST trademark. These circumstances, combined with the lack of any denial or contrary allegations by the Respondent, is sufficient for the Panel to find that it is more likely than not that the Respondent was well aware of the Complainant when it registered the disputed domain names and that it has registered and used them in an attempt to unfairly capitalize on the Complainant yet unregistered trademark rights.
According to the evidence submitted by the Complainant, the Respondent’s website included a disclaimer for the lack of affiliation to the Complainant. However, as discussed in section 3.7 of the WIPO Overview 3.0, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. This Panel finds that the same applies in the present case, and the Respondent’s use of this disclaimer is rather an admission by it that Internet users may be confused.
Therefore, the Panel finds that the Respondent has registered and used the disputed domain names 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 names <doublelist.name>, <doublelist.pro>, and <doublelist.store> be transferred to the Complainant.
Date: June 9, 2020