WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Concur Technologies, Inc v. WhoisGuard, Inc. / Don Stanley
Case No. DCO2019-0001
1. The Parties
Complainant is Concur Technologies, Inc of Bellevue, Washington, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is WhoisGuard, Inc. of Panama / Don Stanley of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <concur.co> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2019. On January 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 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 Complainant on January 21, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 22, 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 Respondent of the Complaint, and the proceedings commenced on January 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 27, 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
Complainant, Concur Technologies, Inc, provides integrated travel, expense and invoice management services and solutions. Complainant began offering services under the CONCUR trademark in 1993 and now operates 45 offices across 27 territories. Complainant owns valid registrations for the CONCUR trademark in Mexico, Switzerland, the European Union, the United States and Canada. The earliest date on which the Complainant can rely for purposes of priority under its trademark registrations is a first use date of August 1, 1998, from United States registration 2,480,327, registered August 21, 2001. Complainant also owns the domain name <concur.com>, which it registered on August 4, 1998, on which it advertises its travel, expense and invoice management services and which has received an average of over 859,000 monthly visits over the last six months.
Respondent registered the disputed domain name, <concur.co>, on October 1, 2011. The disputed domain name resolves to a registrar parking page displaying sponsored links. Furthermore, the disputed domain name is currently being offered for sale by Respondent for USD 14,950.
5. Parties’ Contentions
Complainant asserts that it owns valid and enforceable rights in the CONCUR trademark, which are reflected in registrations in Mexico, Switzerland, the European Union, the United States and Canada and which cover goods and services identified therein. Complainant further alleges that its CONCUR trademark is well known, known internationally and known in numerous countries.
Complainant asserts that it does not sponsor and is not affiliated with Respondent, nor has it authorized Respondent’s use of the CONCUR trademark.
Complainant alleges that Respondent registered the disputed domain name after Complainant had acquired rights in the CONCUR trademark. Complainant alleges that it registered its <concur.com> domain name on August 4, 1998 and Complainant’s trademark registrations allege use as early as 1999, whereas Respondent allegedly registered the disputed domain name in 2011.
Complainant asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods or services. Complainant argues that Respondent is using the disputed domain name to redirect users from Complainant’s website available at <concur.com> to third party websites, by providing links to those third party websites at the website to which the disputed domain name resolves. Complainant further contends that the content and links provided at Respondent’s website make direct reference to Complainant’s CONCUR trademark. Complainant alleges that some of the third party websites to which Respondent’s website links offer goods or services that directly compete with those offered by Complainant under its CONCUR trademark. Complainant alleges that Respondent receives pay-per-click fees from the third parties operating the websites to which it links through the disputed domain name. In addition, Complainant alleges that Respondent is offering the disputed domain name for sale for an amount that exceeds Respondent’s out-of-pocket expenses in registering the disputed domain name.
Complainant argues that Respondent knew or should have known of Complainant’s rights in the CONCUR trademark. Complainant contends that, in the first quarter of the year 2011 when the disputed domain name was registered, Complainant posted USD 80.2 million in revenue and that this volume of business reflects the fame of its CONCUR trademark. Complainant also observes that searches for “concur” across multiple Internet search engines return highly ranked results referring to Complainant’s goods and services under the CONCUR trademark.
Complainant argues that Respondent’s use of the disputed domain name is likely to cause confusion because the disputed domain name consists entirely of the CONCUR trademark with the mere addition of a Top-Level Domain.
Respondent did not reply to Complainant’s contentions.
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.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally considered to be sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence that it owns the following valid trademark registrations: CONCUR (Mexico Reg. No. 614123); CONCUR (Switzerland Reg. No. P-463427); CONCUR (European Union Reg. No. 001089309); CONCUR (United States Reg. No. 2480327); CONCUR (United States Reg. No. 2498656); and CONCUR (Canada Reg. No. TMA652047).
With Complainant’s rights in the CONCUR trademark established, the remaining question under the first element of the Policy is whether the disputed domain name, typically disregarding the TLD in which it is registered (in this case, “.co”), is identical or confusingly similar to 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. See Celgene Corporation v. John Rashad, Esq., WIPO Case No. D2017-2372. Here, the disputed domain name is confusingly similar to Complainant’s CONCUR trademark, because this mark is fully incorporated into the disputed domain name at the second level.
Thus, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the CONCUR mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to its own website, providing links to third-party websites from which Respondent ostensibly collects click-through fees.
In these circumstances, use of the disputed domain name to redirect Internet users to a website used to generate click-through fees from links to other third-party websites cannot confer any rights or legitimate interest in the disputed domain name to Respondent. See, e.g., Richemont International SA v. Turvill Consultants, WIPO Case No. D2014-0862 (“Respondent is using the disputed domain names as pay-per-click advertisement websites that includes a search engine and advertise links to the products of Complainant’s competitors and/or counterfeit products, which is not a bona fide or legitimate use”).
Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interest in the disputed domain name. Thus, 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
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 Panel finds that Complainant provided ample evidence to show that use and registration of the CONCUR trademark long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the CONCUR trademark when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3,2,1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Noting that Respondent lacks any rights or legitimate interests in the disputed domain name, use of the disputed domain name incorporating Complainant’s identical trademark by Respondent, who has not been authorized to redirect Internet users to a Respondent-owned website for commercial gain, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: […] redirecting the domain name to a different respondent-owned website […]”). As noted by Complainant, there is a parallel here in that the disputed domain name appears intentionally calculated to appear similar to Complainant’s domain name <concur.com> (registered in 1998), further adding to the potential for confusion.
Respondent’s use of the disputed domain name to maintain a pay-per-click website displaying links related to Complainant and to advertise services competitive to those of Complainant, and to generate click-through revenue in connection with those links and advertisements, suggests bad faith registration and use under Policy paragraph 4(b)(iv). See, e.g., Hardee’s Food Systems, Inc. v. Morgan Kelsey, WIPO Case No. D2011-1757.
Although Respondent registered the disputed domain name, which wholly incorporates Complainant’s CONCUR trademark, and made public offers to sell the disputed domain name for USD 14,950, Complainant has not made of record evidence establishing Respondent’s out-of-pocket costs in acquiring the disputed domain name. Therefore, the Panel cannot find that Respondent registered or acquired the disputed domain name primarily for the purpose of selling the disputed domain name registration for valuable consideration as contemplated by paragraph 4(b)(i) of the Policy.
Nevertheless, in light of this activity, given that Respondent failed to rebut evidence in the record supporting a claim of bad faith registration and use, the Panel can only conclude that the disputed domain name was registered and used in bad faith.
Accordingly, the Panel 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 <concur.co> be transferred to Complainant.
Brian J. Winterfeldt
Date: March 14, 2019