The Complainant is Vanity Number Leasing, LLC, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Domains by Proxy, LLC. Domains by Proxy, LLC, United States / Harold Singer, United States.
The disputed domain name <411floridapain.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2020 regarding the Disputed Domain Name and one other disputed domain name (the “Second Domain Name”). On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name and the Second Domain Name. On November 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names and the Second Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On November 9, 2020, the Complainant requested the suspension of the proceeding to pursue settlement negotiations with the Respondent regarding the Second Domain Name. On November 27, 2020, the Center informed the Registrar of the settlement reached for the Second Domain Name. On December 4, 2020, the Second Domain Name was withdrawn from the proceeding and the proceeding was reinstituted with regard to the Disputed Domain Name.
The Center sent an email communication to the Complainant on December 4, 2020, providing the registrant and contact information disclosed by the Registrar for the Disputed Domain Name, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 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.
The Complainant is a Florida limited liability company that provides an attorney referral system for victims of motor vehicle collisions, slip and fall accidents, work-related injuries, and all other personal injury cases. The Complainant also provides to its customers insurance and healthcare services and information.
The Complainant owns trademarks that are registered through the United States Patent and Trademark Office (“USPTO”). Some of the trademark registrations include, but are not limited to: 411PAIN, United States Registration No. 2,621,497, registered on September 17, 2002, in International Classes 35 and 42; 1-800-411-PAIN, United States Registration No. 3,885,749, registered on December 7, 2010, in International Classes 35, 36, and 44; and AFTER 911, CALL 411, United States Registration No. 3,548,378, registered on December 16, 2008, in International Class 44 (hereinafter collectively referred to as the “411PAIN Mark”) or the “411PAIN Marks”). The 411 PAIN Marks have been in use in commerce as early as 1996.
The Complainant also owns dozens of domain name registrations, including those that incorporate the 411 PAIN Marks, including, for example, <411pain.biz>, <411pain.com>, <1800411pain.mobi>, <1800411pain.net>, and <1800411pain.me>.
The Complainant has spent millions of dollars advertising and promoting the 411PAIN Marks, its domain names and toll-free number, on television, radio, and on billboards throughout the United States.
The Disputed Domain Name was created on January 26, 2018. The Disputed Domain Name resolves to a parking page that contains pay-per-click third-party sponsored hyperlinks, purportedly providing the Respondent a profit from click-through fees.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s 411PAIN Marks;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the 411PAIN Marks based on its years of use as well as its registered trademarks for the 411PAIN Marks in the United States. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the 411PAIN Marks.
The Disputed Domain Name <411floridapain.com> consists of the 411PAIN Mark, with the geographic term “florida” in between “411” and “pain”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here, the Disputed Domain Name contains the Complainant’s 411PAIN Mark in its entirety and thus, the Disputed Domain Name is confusingly similar to the 411PAIN Mark. Moreover, the use of the geographic term “florida” to the Complainant’s 411PAIN Mark does not prevent a finding of confusing similarity. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a geographic term to a trademark is insufficient to prevent a finding of confusing similarity. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the complainant’s trademark).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that the complainant has made a prima facie case of lack of rights or legitimate interests, the burden shifts to the respondent to establish some rights or legitimate interests in respect of the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its 411PAIN Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.
In addition, the Respondent is using the Disputed Domain Name for the purpose of trading on the Complainant’s name and 411PAIN Marks to divert unwitting Internet users searching for the Complainant’s website to its parking page by capitalizing on the fame and goodwill of the Complainant. Such use does not constitute rights or legitimate interests in the Disputed Domain Name.
Furthermore, by not submitting a response, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds rights or legitimate interests in the Disputed Domain Name. See Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323. See also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (the respondent’s default is further evidence to conclude that it had no rights or legitimate interests in the domain name).
Moreover, Panels have also found that use of a domain name to redirect a domain name to third-party websites for commercial gain does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. See F. Hoffmann-La Roche AG v. Dean Gagnon, WIPO Case No. D2007-1009 (“The use of a domain name comprising a third party’s renown trademark to redirect to a search engine consisting of third parties’ links, most probably for profit purposes, cannot be considered a use in connection with a bona fide offering of goods and services.”). Applying the principles under paragraph 4(c) of the Policy, panels have found that the use of a domain to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of a complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. In this instance, the Disputed Domain Name resolves to such a parked page comprising multiple links regarding pain relief and services associated with those of the Complainant.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
Based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s 411PAIN Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its 411PAIN Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”).
Further, the Respondent attracts users for commercial gain by displaying third-party pay-per-click sponsored links. Use of a confusingly similar domain name to display third party hyperlinks and collect click-through fees is evidence of bad faith under Policy paragraph 4(b)(iv).
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <411floridapain.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: January 21, 2021