The Complainants are MarkMonitor Inc., Thomson Reuters Canada Limited, Thomson Reuters Organization LLC, and Thomson Reuters Corporation of Boise, Idaho, United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Admin, E-Promote of Las Vegas, Nevada, United States.
The disputed domain name <markmonitors.com> is registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 April 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 6, 2016.
The Center appointed Dennis A. Foster as the sole panelist in this matter on May 13, 2016. 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.
The Complainant MarkMonitor Inc., a subsidiary of the Complainant Thomson Reuters Canada Limited, markets services designed to protect the brands and trademarks of large global companies. The Complainants own registrations with various authorities, including the United States Patent and Trademark Office (“USPTO”) and Benelux Office for Intellectual Property (“BOIP”), for the MARKMONITOR service mark, (e.g., USPTO Registration No. 2,669,208, registered December 31, 2002; and BOIP Registration No. 0775588, registered October 26, 2005).
The Respondent owns the disputed domain name, <markmonitors.com>, which was registered on November 29, 2014. The disputed domain name resolves to a website that offers services that compete directly with the services of the Complainant.
The Complainant MarkMonitor Inc., acquired by the Complainant Thomson Reuters Canada Limited in 2012, was founded in 1999 and is headquartered in San Francisco, California in the United States. This Complainant offers technology-driven services that aid its clients in the protection of their brands and trademarks on a worldwide basis.
The Complainants have registered the MARKMONITOR service mark with various authorities, including with the USPTO and BOIP.
The disputed domain name, <markmonitors.com>, is confusingly similar to the MARKMONITOR service mark, because the disputed domain name contains the full mark along with the inconsequential additions of the letter, “s”, and the generic Top-Level Domain (“gTLD”), “.com”.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainants have granted the Respondent no license or authorization to use the MARKMONITOR mark. The disputed domain name resolves to a website that offers, among other things, links for services that compete directly with the services offered by the Complainant. That use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Moreover, there is no evidence that the Respondent is commonly known as the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The disputed domain name is being employed by the Respondent to misdirect Internet users to the Respondent’s website for commercial gain based on confusion between that domain name and the Complainants’ service mark as to source, sponsorship affiliation or endorsement. Moreover, the Respondent’s actions in connection with the disputed domain name prevent the Complainants from using their mark in a corresponding domain name. Furthermore, the Respondent is guilty of a pattern of cybersquatting, as it has registered thousands of domain names — many apparently of an infringing nature — and has lost several previous Policy decisions. Finally, the Respondent has failed to respond to the Complainants’ email communication regarding the disputed domain name, more evidence of bad faith.
The Respondent did not reply to the Complainants’ contentions.
In line with paragraphs 4(a)(i) – (iii) of the Policy, the Panel shall rule in favor of the Complainants in this proceeding and grant the Complainants ownership of the disputed domain name, <markmonitors.com>, provided that the Complainants prove:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
The Complainants have established the required rights in the MARKMONITOR service mark by presentation to the Panel of effective evidence of the Complainants’ registrations for that mark with the USPTO and BOIP. See, for example, Intagent LLC v. Dominor LLC, WIPO Case No. D2008-1878 (“Complainant has demonstrated rights in the service mark INTAGENT based on use in commerce and as evidenced by registration at the USPTO”); and Drugstore.com, Inc. v. Nurhul Chee / Robert Murry, WIPO Case No. D2008-0230 (“it is consensus view among Panelists that if a complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights”).
The Complainants contend that the disputed domain name, <markmonitors.com>, is confusingly similar to the MARKMONITOR service mark. The Panel observes that the mark is fully contained in the disputed domain name and that there are only minor additions. The additional “s” suggests merely a plural form of the service mark, and thus provides no meaningful distinction from, but only increased confusion with, that mark. Since a suffix is required of all domain names, the included gTLD, “.com”, furnishes no distinction at all. Clearly, the Panel must conclude that the disputed domain name, <markmonitors.com>, is at least confusingly similar to the MARKMONITOR mark. See, Lotus Group Limited v. Dial A Flights, WIPO Case No. D2016-0080 (finding <dialaflights.com> to be confusingly similar to the DIAL-A-FLIGHT mark); and Merck Sharp & Dohme Corp. v. Paulo Kann, WIPO Case No. D2010-2093 (finding <mercks.com> to be confusingly similar to the MERCK mark).
Accordingly, the Panel finds that the Complainants have succeeded in proving that the disputed domain name is identical or confusingly similar to a service mark in which the Complainants have rights.
Under the Policy, the Complainants must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In this instance, the Complainants have asserted that no license or authorization was granted to the Respondent for use of the Complainants’ MARKMONITOR service mark. Moreover, as ascertained above by the Panel, the disputed domain name is confusingly similar to that mark. Thus, the foregoing does constitute a prima facie case that the Respondent lacks such rights or legitimate interests, to which the Respondent must furnish concrete rebuttal evidence in order to prevail. See, Philip Morris USA Inc. v. yfmg, WIPO Case No. D2010-0058 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name”); and Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598 (“it is the consensus view of WIPO UDRP panels that the threshold for the complainant to prove a lack of rights or legitimate interests is low, and that, once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent”).
The Respondent, though the subject of several past UDRP proceedings as a respondent, has ignored its opportunity to submit a filing in this case. Consequently, the Panel must then regard the contentions put forth by the Complainant as true, unless rebutted otherwise in the record or by common experience. See, Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (where no response was filed, leading the panel to conclude, “asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant”); and DESOTEC N.V. v. JACOBI CARONS AB, WIPO Case No. D2000-1398 (“Respondent has not reacted to the Complaint within the time period set by the WIPO Center and consequently is in default. Under these circumstances, all allegations contained in the Complaint are deemed to be correct to the extent not contradicted by any evidence or documents on file”).
The Complainants assert that the disputed domain name leads to a website that provides links to third party websites offering services that compete directly with those of the Complainants. In line with countless previous UDRP panels, the Panel concludes that such activity constitutes neither a bona fide offering of goods or services per Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair usage of the disputed domain name per Policy paragraph 4(c)(iii). See, Zions Bancorporation v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-0465 (“The Panel further finds that the Respondent’s use of the Domain Name incorporating in its entirety the Complainant’s trademark to point to a parking website containing sponsored links related to [. . .] the Complainant’s same business activity - cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name”); and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550 (“the Respondent has linked the [disputed] domain name to a website offering links to third-party commercial websites grouped under a variety of headings, many of which relate to the Complainant’s field of business[. . .]. [S]uch a commercial link service is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name”). Moreover, there is no evidence in the record or otherwise that the Respondent, Domain Admin, E-Promote, is commonly known as the disputed domain name, <markmonitors.com>, precluding the applicability of Policy paragraph 4(c)(ii).
As the Panel has found Policy paragraph 4(c) to be inapplicable in this case, and there is no other rebuttal evidence presented by the Respondent, the Panel concludes that the Complainants’ prima facie case must prevail.
Therefore, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel accepts the reasonable and not contradicted contention by the Complainants that the Respondent uses the disputed domain name for a webiste that contains links to those of third parties that offer services that compete directly with the Complainants’ services. The Panel also agrees with the Complainants that the Respondent likely receives commercial gain, in the form of so-called “click-through fees”, for these efforts. The Panel’s conclusion is that the Respondent’s intention is to lure Internet users to its website for commercial gain due to likely confusion between the disputed domain name and the Complainants’ service mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Accordingly, the Panel believes that Policy paragraph 4(b)(iv) applies to this case and that the Respondent is responsible for bad faith registration and use of the disputed domain name. See, Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 (“Respondent has used the disputed domain name, first, to direct Internet users to a link farm parking page offering goods and services competitive with those of Complainant and second, to direct Internet users to a website offering goods and services directly competitive with those of Complainant[. . .]. This constitutes bad faith registration and use of the disputed domain name”); and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“because both of the Disputed Domain Names resolve to landing pages at which competitive services are offered, Complainant has established that Respondent’s use of these domain names is in bad faith”).
Assisting the Panel in its conclusions regarding this element of the Policy is the Complainants’ accepted contention that the Respondent has registered thousands of domain names, with many of such registrations of dubious legitimacy. Moreover, confirmation of the Respondent’s propensity toward abusive cybersquatting behavior is suggested in the numerous adverse rulings rendered against the Respondent by prior UDRP panels, as kindly submitted for the Panel’s notice in the Complaint. Ergo, the Panel believes that Policy paragraph 4(b)(ii) is also applicable in sustaining a finding of bad faith regarding the Respondent’s actions in this case. See, inter alia, Kiss Nail Products, Inc. v. E-Promote, WIPO Case No. D2009-1303; Pfizer Inc., Pfizer Ireland Pharmaceuticals v. E-Promote, WIPO Case No. D2009-0532; VeriSign Inc. v. Domain Admin, E-Promote, WIPO Case No. D2006-1501.
As a result, the Panel finds that the Complainants have proven that the disputed domain name was registered and is 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 name, <markmonitors.com>, be transferred to the Complainant, MarkMonitor Inc.
Dennis A. Foster
Sole Panelist
Date: May 27, 2016