The Complainant is Front Rush LLC, United States of America (“United States”), represented by Keating Muething & Klekamp PLL, United States.
The Respondent is Contact Privacy Inc. Customer 1246804553, Canada / Gray Dorsett, United States.
The disputed domain name <frontrushdatabreach.org> is registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2020. On September 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2020, 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 the Complainant on September 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 25, 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 October 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on November 2, 2020. 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 provides technology solutions for recruiting, compliance and administrative sports operations. Over 1,200 colleges and universities have utilized the Complainant’s services. The Complainant is the owner of a United States trademark registration for FRONT RUSH, United States Registration No. 5395583, for downloadable software and software as a service (SaaS), applied for July 12, 2017, and registered February 6, 2018. The Complainant asserts first use of the mark in commerce as early as January 2006. The Complainant also has registered the domain name <frontrush.com> for use in connection with the Complainant’s website.
In early January 2020, a data breach was reported to the Complainant, potentially involving disclosure of student transcripts, injury reports, athletic reports, and other personal information and data. Further details of the data breach (“Incident”) were provided by the Complainant in a press release issued on July 27, 2020. The Complainant reports it is providing services for monitoring and remediating the Incident, notifying affected individuals, and has set up a toll-free hotline for information and assistance, with some credit monitoring.
The disputed domain name <frontrushdatabreach.org> was registered by the Respondent on March 30, 2020. The disputed domain name at present does not appear to resolve to an active website. However, the disputed domain name previously has been used with a website on which the Respondent has offered data breach consulting, including “free one-on-one recruiting and security consultation, exclusive for Front Rush customers.”
The Complainant’s representative sent a cease and desist letter to the Respondent by email on August 19, 2020, to which the Respondent did not respond.
The Complainant submits that the disputed domain name <frontrushdatabreach.org> is confusingly similar to the Complainant’s FRONT RUSH mark. The Complainant explains that the descriptive words “data” and “breach” in the disputed domain name refer to the Incident. The Complainant reports it is providing services for monitoring and remediating the Incident, including notifying affected individuals and setting up a toll-free hotline. The Complainant maintains that, when the mark at issue is recognizable within the disputed domain name, the addition of descriptive terms will not avoid a finding of confusing similarity. According to the Complainant, the terms “data” and “breach” add to the confusion by creating a further association with the disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant notes that its rights in the FRONT RUSH trademark date back to 2006, whereas the disputed domain name was not registered by the Respondent until many years later, on March 30, 2020. The Complainant insists that the Respondent cannot demonstrate use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services predating the Complainant’s rights in its FRONT RUSH mark. The Complainant maintains that the Respondent has not been authorized, licensed, or otherwise permitted to use the Complainant’s FRONT RUSH mark, including use of “Front Rush Data Breach” in the disputed domain name.
The Complainant submits that the Respondent has not been commonly known by the disputed domain name, and has not acquired any trademark or service mark rights in therein. The Complainant maintains the Respondent’s sole purpose for the registration and use of the disputed domain name has been to divert consumers away from the Complainant’s website at “www.frontrush.com”. The Complainant emphasizes that the Respondent has used the disputed domain name to target the Complainant’s customers, offering “free one-on-one” data breach and security consultation services, and recruiting services competing with those of the Complainant. The Complainant maintains that the Respondent is not making a noncommercial or other fair use of the disputed domain name.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant notes that the disputed domain name is comprised of the Complainant’s FRONT RUSH mark plus two descriptive words, and reiterates that the disputed domain name was registered long after the Complainant had acquired rights in the FRONT RUSH mark. According to the Complainant, UDRP panels consistently have held that the registration of a domain name confusingly similar to a widely-known mark by an unaffiliated entity is sufficient to create a presumption of bad faith registration.
Given the Complainant’s registration and use of its FRONT RUSH mark over a number of years, the Complainant maintains that the Respondent knew or should have known of the Complainant’s rights in the FRONT RUSH mark when registering the disputed domain name. The Complainant considers the most important factor to be that the Respondent is using the disputed domain name and the name “Front Rush Data Breach Consulting” to market and sell ARI Recruiting’s competing recruiting solutions. The Complainant submits that the Respondent is offering free one-on-one recruiting and security consultation to the Complainant’s customers in order to disrupt the Complainant’s business, and is using the disputed domain name in bad faith to lure and divert web traffic to the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain name”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <frontrushdatabreach.org> is confusingly similar to the Complainant’s FRONT RUSH mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s FRONT RUSH mark is clearly recognizable in the disputed domain name.2 The inclusion of the descriptive terms “data” and “breach” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s FRONT RUSH mark. The Respondent notwithstanding has registered the disputed domain name, appropriating the Complainant’s FRONT RUSH mark, and has directed the disputed domain name to a website offering recruiting services in direct competition with those of the Complainant .
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes based on the record that the Respondent was well aware of the Complainant and had the Complainant’s FRONT RUSH mark firmly in mind when registering the disputed domain name. As noted earlier, the disputed domain name is confusingly similar to the Complainant’s FRONT RUSH mark, and it is evident from the record that the Respondent has directed the disputed domain name to a website on which the Respondent promotes recruiting services that compete with those of the Complainant. UDRP panels have applied the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise. WIPO Overview 3.0, section 3.1.3. See, e.g., Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., WIPO Case No. D2017-0481.
Having regard to the relevant circumstances in this case, and absent any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, and nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy. The Respondent clearly was aware of the Complainant and had the Complainant’s FRONT RUSH mark in mind when registering the disputed domain name. The record is convincing that the Respondent intentionally registered and has used the disputed domain name to create a likelihood of confusion with the Complainant’s FRONT RUSH mark, seeking to disrupt the business of the Complainant and acting in opposition for means of commercial gain.
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 <frontrushdatabreach.org> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: November 15, 2020
1 See WIPO Overview 3.0 , section 1.7 .
2 See WIPO Overview 3.0, section 1.8 and cases cited therein.
3 Id.
4 See WIPO Overview 3.0 , section 1.11 .