WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CouponCabin LLC v. Charles Martin, Net Exclusive LLC
Case No. D2021-0244
1. The Parties
Complainant is CouponCabin LLC, United States of America (“United States”), represented by Patterson + Sheridan, LLP, United States.
Respondent is Charles Martin, Net Exclusive LLC, United States.
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 January 26, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2021, 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 Complainant on January 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received email communications from Respondent on January 28, January 29, February 1, and February 2, 2021. Complainant filed an amendment to the Complaint on January 29, 2021.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. Respondent submitted a response on February 19, 2021.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 7, 2021. 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
Complainant, CouponCabin LLC, 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. Complainant owns multiple registrations for the COUPONCABIN mark in the United States. These include a registration for COUPON CABIN (Registration No. 3666660) which issued to registration on August 11, 2009; a registration for COUPONCABIN.COM (Registration No.3666710) which issued to registration on August 11, 2009; and a registration for COUPONCABIN (Registration No. 4509905) which issued to registration on April 8, 2014. The COUPON CABIN, COUPONCABIN and COUPONCABIN.COM marks are hereinafter collectively referred to as the “COUPONCABIN mark.”
Respondent is a web entrepreneur based in the state of Texas in the United States. Respondent acquired the disputed domain name in or about April 2020. Respondent has not used the disputed domain name for an active website or page and has offered the disputed domain name for sale through GoDaddy.com.
5. Parties’ Contentions
Complainant contends that it has rights in the COUPONCABIN name and mark by virtue of its United States trademark registrations that predate Respondent’s registration of the disputed domain name.
Complainant asserts that the disputed domain name is confusingly similar to the COUPONCABIN mark as it wholly incorporates the COUPONCABIN mark with the addition of the letters “et” which are calculated to mislead Internet users and capitalize upon their potential confusion.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name as Respondent (i) has no connection or affiliation with Complainant, (ii) has not received any license or consent from Complainant to use the COUPONCABIN mark, (iii) is not using the disputed domain name for any legitimate noncommercial or fair use, and (iv) has merely offered the disputed domain name for sale through GoDaddy.com.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent has only attempted to sell the disputed domain name for profit and has no legitimate reason for operating a website at the disputed domain name.
Respondent rejects Complainant’s contentions. Respondent contends that he bought the disputed domain name at auction “because I liked the name and thought it was catchy.” Respondent notes that he is a web entrepreneur who has “launched multiple web startups and software applications,” and that it is his practice to put domain names for sale when he “does not have immediate plans for using a domain name”
Respondent asserts that he performed due diligence at the time he registered the disputed domain name by running searches in the United States Patent and Trade Office database and could not find any trademark using the term “coupon cabinet”. Respondent also asserts that he had never heard of the company Coupon Cabin when he registered the disputed domain name.
Respondent argues that the disputed domain name consists of two generic words with distinct meanings and has a completely different meaning from Coupon Cabin. Respondent also maintains that he has not acted in bad faith as the disputed domain name does not resolve to a web page with pay-per-click links.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Complainant has provided evidence that it owns and obtained trademark registrations for its COUPONCABIN mark in the United States prior to the date that Respondent registered the disputed domain name.
With Complainant’s rights in the COUPONCABIN mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s COUPONCABIN mark as the disputed domain name fully incorporates the COUPONCABIN mark. The addition of the letters “et” does not prevent a finding of confusing similarity, as the COUPONCABIN mark is clearly recognizable in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s COUPONCABIN mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence before the Panel establishes that Complainant has pre-existing rights in the COUPONCABIN mark. Given that Respondent has admitted that he has no immediate plans for the disputed domain name, has made no use of the disputed domain name, and has merely sought to sell the disputed domain name, the question is whether Respondent has in fact a legitimate interest in selling a disputed domain name which is slightly different from Complainant’s COUPONCABIN mark by using the word “cabinet” as opposed to “cabin.”
To begin, the COUPONCABIN mark appears to be a coined term made up of two common words. It is not, however, a common English expression. The disputed domain name mirrors that coined term by using a slight variation that places the word “cabinet” after the word “coupon”. The Panel recognizes that connotatively, the words “cabin” and “cabinet” mean different things. However, the words “cabin” and “cabinet” in combination with the word “coupon” both connote some sort of coupon repository. They also share the same root, namely “cabin.” Given that there is a close similarity between the disputed domain name and the coined COUPONCABIN mark, it is not unreasonable to surmise that consumers may likely perceive the disputed domain name as connected to Complainant or Complainant’s coupon service available at <couponcabin.com>.
The fact that Respondent admits that he had no immediate plans for the disputed domain names and simply put it up for sale, puts into question whether, in fact, Respondent has a legitimate interest in the disputed domain name or is simply seeking to profit from the disputed domain name and its potential association with the COUPONCABIN mark. While Respondent claims to not have had any awareness of Complainant and the COUPONCABIN mark and to not have found any trademark for “coupon cabinet”, a simple search on Google or Bing for “coupon cabinet” immediately turns up results for Complainant and its COUPONCABIN mark. To the Panel this is revealing, given that COUPONCABIN is a coined term. It is true that a search for “coupon cabinet” in the United States Patent and Trademark Office database does not reveal a COUPON CABINET mark, but such a search seems somewhat pretextual when a quick search on Google, for example, immediately reveals COUPONCABIN.COM. It is almost as though the search may have been done after the fact and for purposes of justifying the registration of the disputed domain name which mirrors and plays upon the COUPONCABIN mark.
Consequently, given that Respondent has only sought to sell the disputed domain name, and has not used for any particular venture, it seems more likely than not that Respondent either had some awareness of Complainant or seized on an opportunity to profit from the disputed domain name and its likely perceived connection with Complainant.
Given that Complainant has established with sufficient evidence that it owns rights in the COUPONCABIN mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Given Respondent’s above noted actions, it seems more likely than not that Respondent has acquired and used the disputed domain name in bad faith. The fact that the disputed domain name appears to play upon the coined term “couponcabin”, and connotatively is quite similar as suggesting some sort of coupon repository, it seems to the Panel that Respondent either had some awareness of Complainant and its COUPONCABIN service or should have known that its registration of the disputed domain name plays upon and would be confusingly similar to Complainant’s COUPONCABIN mark. WIPO Overview 3.0, section 3.2.2.
It is again worth noting that a simple Internet search would have quickly revealed Complainant’s rights in the COUPONCABIN mark. It is telling that while Respondent claims to have conducted due diligence and refers to running a search on the United States Patent and Trademark Office database for only “coupon cabinet”, Respondent makes absolutely no mention of running any Internet searches for “coupon cabinet”. Such searches would have readily revealed the COUPONCABIN mark and thus it seems questionable that Respondent, a web entrepreneur and claimed developer of niche portals, would not have conducted any search of “coupon cabinet” on the Internet.
In view of the fact that Respondent has made no use of the disputed domain name, bought the disputed domain name because “it sounded catchy” (which in itself confirms the “coined term” aspect of the disputed domain name), has no immediate plans for the disputed domain name, and has simply offered the disputed domain name for sale, suggests that Respondent opportunistically and in bad faith acquired the disputed domain name to profit from it and its potential association with Complainant.
The Panel thus finds that Complainant succeeds under this element 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 disputed domain name <couponcabinet.com> be transferred to Complainant.
Date: March 18, 2021