WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blackhawk Network, Inc. v. 1337 Services LLC, Robert Mkhitarian, Proxy Protection LLC, Lilith Brown, Withheld for Privacy efh, Lilit Dagie, Mike Twin, Adam Adamyan, Jensen Mars, Took Herassa, John Adamyan, The Perfect Gift Services LLC, Robert Smith, Roger Vance, Mario Velez, Juan Vanailita, Lamino Piking, Divine Design, Bella Tovmas
Case No. D2021-1611
1. The Parties
The Complainant is Blackhawk Network, Inc., United States of America (“United States”), represented by Jonathan Matkowsky, United States.
The Respondents are 1337 Services LLC, Saint Kitts and Nevis; Robert Mkhitarian, Canada; Proxy Protection LLC, Canada; Lilith Brown, United States; Withheld for Privacy efh, Iceland; Lilit Dagie, Russian Federation; Mike Twin, United States; Adam Adamyan, Canada; Jensen Mars, United States; Took Herassa, United States; John Adamyan, Canada; The Perfect Gift Services LLC, United States; Robert Smith, United States; Roger Vance, United States; Mario Velez, Colombia; Juan Vanailita, Canada; Lamino Piking, United States; Divine Design, United States; Bella Tovmas, United States.
2. The Domain Names and Registrars
The disputed domain names <checkbalance-theperfectgiftsca-card.com>, <giftcardmall-mygift-balance.info>, <giftcardmall.group>, <giftcardmall.services>, <heperfectgift.com>, <mygift-giftcardmall-balance.info>, <mygift-giftcardmall.info>, <mygiftingmall.net>, <myprepaidcenter-balance.info>, <myprepaidcenter.ltd>, <myprepaidcenter.vip>, <myprepaidcenterone.com>, <myprepaidcentir.co>, <perfectgift.cam>, <thaiperfectgift.com>, <theperfectgift.digital>, <theperfectgiftca.me>, <theperfectgiftcabalance.com>, <theperfectgiftcard.info>, and <theperfectgiftvisa.com> are registered with NameCheap, Inc. (the “First Registrar”)
The disputed domain names <giftcardmall-balance.one>, <giftcardmall-mygift.info>, <giftcardmall.one> and <giftcardmall.top> are registered with Tucows Inc. (the “Second Registrar”)
The disputed domain name <giftcardmall.design> is registered with eNom, LLC. (the “Third Registrar”)
The disputed domain names <myprepaidcentre.name> and <mvprepaidcentre.net> are registered with Eranet International Limited. (the “Fourth Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2021. On May 25, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. The Center also sought clarification from the Fourth Registrar in respect of the disputed domain name <mvprepaidcentre.net> by email on August 9, 2021. On May 27, 2021 and August 9, 2021, the Fourth Registrar transmitted by email to the Center verification responses confirming that the respective named Respondent is listed as the registrant and providing contact details.
On May 25 and May 26, 2021, the First Registrar, the Second Registrar and the Third Registrar transmitted by email to the Center their verification responses disclosing registrant and contact information for the respective disputed domain names which differed from the respective named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2021 providing the revised registrant and contact information disclosed by the First, Second and Third Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 7, 2021.
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 Respondents of the Complaint, and the proceedings commenced on June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Responses was June 30, 2021. None of the Respondents submitted any response, save that a response purporting to be served on behalf of the Respondent Divine Design was submitted on June 11, 2021 giving consent to the transfer or cancellation of the disputed domain name <thaiperfectgift.com>. Accordingly, the Center notified the Respondents’ default on July 9, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on July 21, 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
The Complainant is a United States corporation founded in 1999. It introduced the idea of selling gift cards in grocery stores in 2001. It now provides a range of branded payment programs in 28 countries using physical gift cards, as well as online, in digital wallets and via social media, and by smartphone apps. It features over 1,000 brands in dining, entertainment, retail, home improvement and many other categories, with over 3,000 employees around the world.
In connection with the provision of its various services, the Complainant has used the mark GIFT CARD MALL since 1999, the mark THE PERFECT GIFT since 2006 and the mark MY PREPAID CENTER since 2011. It is the registered proprietor of a number of trademarks comprising these marks including: United States Trademark Registration No. 5684164 GIFT CARD MALL registered on February 26, 2019; Benelux Trademark Registration No. 1443098 THE PERFECT GIFT registered on May 20, 2021; and United States Trademark Registration No. 4733817 MY PREPAID CENTER registered on May 12, 2015.
One disputed domain name was registered on February 13, 2020. The remaining 26 disputed domain names were registered between January 1, 2021 and March 7, 2021.
The disputed domain names <giftcardmall-mygift-balance.info> and <mygift-giftcardmall-balance.info> resolve to a website headed “VISA” featuring “The Visa eGift Card” and other Visa gift and debit cards, purporting to be a website operated by the Complainant. The “Contact Us” section specifies “Blackhawk Network” at an address in Reno, Nevada, United States and a footer attributing copyright to “2021 Blackhawk Network”. The webpage includes a section “Please enter your card information below to register your card” and invites users to enter their gift card number, expiration date and 3-digit CVV2 code.
The disputed domain name <myprepaidcentre.name> resolves to a webpage headed “MyPrepaidCenter”. It includes a section headed “Welcome to My Prepaid Center” and invites users to activate their “plastic card” by entering the card number. The copyright attribution at the foot is “2020 Blackhawk Network, Inc”.
The disputed domain name <heperfectgift.com> resolves to a basic Index page with various links including “The Perfect Gift”, “About Us” and “Contact Us”, none of which appear to function, and ends with links to various “Top rated products” such as “Strawberry Smoothie GBP10.00” which resolve to a 404 not found error.
The disputed domain name <theperfectgiftcard.info> resolves to a NameCheap parking page comprising links to other webpages with, in turn, pay-per-click (“PPC”) links to various third-party websites relating to credit cards.
None of the other disputed domain names resolves to an active webpage.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to its GIFT CARD MALL, THE PERFECT GIFT or MY PREPAID CENTER trademarks, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the Respondents have registered and are using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondents did not reply to the Complainant’s contentions, save that a response purporting to be filed on behalf of the Respondent Divine Design was submitted consenting to the transfer or cancellation of the disputed domain name <thaiperfectgift.com>. However, the person filing the response failed to reply to the Center’s request to explain on what basis it was authorized to file the response.
6. Discussion and Findings
Although paragraph 4(f) of the Policy does envisage multiple disputes between a Complainant and a Respondent being consolidated, neither the Policy nor the Rules provide expressly for the filing of a single Complaint against multiple respondents. However, paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out the basis on which panels have accepted that a single complaint may be filed against multiple respondents. It notes that “panels look at whether: (i) the domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all parties”. Procedural efficiency has also been an important consideration.
The factors identified by panels as useful in determining whether consolidation is appropriate include similarities in, or relevant aspects of:
a) the registrants’ identities including pseudonyms;
b) the registrants’ contact information including email addresses;
c) relevant IP addresses, name servers or webhosts;
d) the content or layout of websites corresponding to the disputed domain names;
e) the nature of the marks at issue;
f) any naming patterns in the disputed domain names;
g) any evidence of respondents’ affiliation with respect to control of the disputed domain names.
In this case the disputed domain names all target the three marks of the Complainant identified above. The Complainant has pointed to the content of the webpages to which some of the disputed domain names resolve and to the identity or similarity between registrants and/or their contact details as disclosed by the Registrars. In addition, the Complainant has adduced detailed technical analysis of the IP address to which a number of the disputed domain names have resolved in the past; of the redirection between linked disputed domain names; and of the commonality of the Google Analytics Tracking ID of a number of the disputed domain names.
Using this range of information, the Complainant has sought to demonstrate, first, the natural grouping of clusters of the disputed domain names, and then in turn the links between each of those groups. None of the Respondents has filed a Response to the Complaint or protested the submission by the Complainant that the Complaint should be consolidated against the multiple respondents. In light of the evidence adduced by the Complainant, the Panel is satisfied on the balance of probabilities that all the disputed domain names are under common control and that the Complaint may be consolidated.
6.2 Substantive issues
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in its GIFT CARD MALL, THE PERFECT GIFT and MY PREPAID CENTER trademarks (the “Marks”) both by virtue of its trademark registrations and through its use of the trademarks for between 10 and 20 years. Although the Complainant’s THE PERFECT GIFT trademark was not registered until after the relevant disputed domain names had been registered, the Panel is satisfied that by the relevant dates the Complainant had acquired sufficient unregistered trademark rights in respect of THE PERFECT GIFT, through its use of the mark, for the purposes of the Policy.
Ignoring the various generic Top-Level Domains (“gTLDs”), the disputed domain names variously:
a) are identical to one of the Marks;
b) comprise the entirety of one of the Marks together with additional words such as “my”, “mygift”, “balance”, “checkbalance”, “one” and “visa”, or the letters “ca”, the country code for Canada;
c) omit the word “the” from the Mark THE PERFECT GIFT;
d) include misspellings of the word “center” – “centre” or “centir”;
e) comprise typographical errors such as “mv” for “my” and “thai” and “he” for “the”.
In the Panel’s view, the various differences from the Marks listed above do not prevent a finding of confusing similarity between the relevant disputed domain names and the matching Marks. Accordingly, the Panel finds that each of the disputed domain names is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has submitted strong prima facie evidence that the Respondents can have no rights or legitimate interests in respect of the disputed domain names. The Respondents have made no active use of the disputed domain names in connection with a bona fide offering of goods or services. Those disputed domain names that resolve to an active website are being used for parking pages linking to PPC links to third party websites; for web pages featuring the Complainant’s THE PERFECT GIFT trademark; or for webpages purporting to be operated by the Complainant inviting users to enter sensitive personal information regarding credit cards. In the Panel’s view, such activity does not give rise to any rights or legitimate interests in respect of any of the disputed domain names.
The Respondents have chosen not to respond to the Complaint and have accordingly failed to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondents do not have any rights or legitimate interests in respect of any of the disputed domain names.
C. Registered and Used in Bad Faith
In light of the nature of the disputed domain names and the use to which a number of them have been put, the Panel is satisfied that the Respondents had the Complainant and its rights in the Marks in mind when they registered the disputed domain names.
The <giftcardmall-mygift-balance.info>, <mygift-giftcardmall-balance.info> and <myprepaidcentre.name> disputed domain names have been used to resolve to webpages purporting to be operated by the Complainant, phishing for confidential personal and financial information. The Complainant has satisfied the Panel that there is sufficient evidence of common control of all the disputed domain names. The Panel also takes into account the inclusion of additional words in the disputed domain names such as “balance” and “visa”. In the Panel’s view, these factors clearly establish, on the balance of probabilities, that all the disputed domain names were registered to confuse Internet users into believing that the disputed domain names were being operated by or authorized by the Complainant and with a view to taking unfair advantage of the Complainant’s rights in the Marks for fraudulent purposes.
To the extent that the Respondents’ use of one or more of the disputed domain names may be said to amount to non-use, the WIPO Overview 3.0 points out at section 3.3 that panelists have consistently found that this does not prevent a finding of bad faith. Factors that panelists take into account, whilst looking at all the circumstances, include “(i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put”.
The Panel considers that the Complainant’s Marks are sufficiently distinctive and well-known; there have been no Responses to the Complaint; and the Panel cannot conceive of any legitimate purpose to which any of the disputed domain names could be put.
Accordingly, the Panel finds that all the disputed domain names have been registered and are being 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 names:
<giftcardmall-balance.one>, <giftcardmall-mygift-balance.info>, <giftcardmall-mygift.info>, <giftcardmall.design>, <giftcardmall.group>, <giftcardmall.one>, <giftcardmall.services>, <giftcardmall.top>, <mygift-giftcardmall-balance.info>, <mygift-giftcardmall.info>, <mygiftingmall.net>, <mvprepaidcentre.net>, <myprepaidcenter-balance.info>, <myprepaidcenter.ltd>, <myprepaidcenter.vip>, <myprepaidcenterone.com>, <myprepaidcentir.co>, <myprepaidcentre.name>, <checkbalance-theperfectgiftsca-card.com>, <heperfectgift.com>, <perfectgift.cam>, <thaiperfectgift.com>, <theperfectgift.digital>, <theperfectgiftca.me>, <theperfectgiftcabalance.com>, <theperfectgiftcard.info>, <theperfectgiftvisa.com> be transferred to the Complainant.
Date: August 11, 2021