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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Consumers Club, Inc. v. Rico Dekker

Case No. D2007-0058

 

1. The Parties

The Complainant is United Consumers Club, Inc., Merrillville, Indiana 46410, United States of America, represented by DLA Piper US LLP, of Chicago, Illinois, United States of America.

The Respondent is Rico Dekker, of Heerhugowaard, the Netherlands.

2. The Domain Name and Registrar

The disputed Domain Name <ucctotalhome.com> is registered with Register.com.

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2007. On January 17, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the Domain Name at issue. On the same day, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On February 6, 2007, the Center notified the Complainant that the Complaint was administratively deficient owing to the lack of hardcopies, which had reportedly been delivered to WIPO for the Center but could not subsequently be traced. The Complainant provided a replacement set of hardcopies which were received by the Center on February 14, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2007.

The Center appointed Keith Gymer as the sole panelist in this matter on March 22, 2007. 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, United Consumers Club, Inc., provides members-only buying club services, through its operating company and a network of franchisees throughout the United States and Canada. It has been in operation for at least thirty-five years. The Complainant has used the UCC mark since 1972 and adopted the UCC TOTAL HOME mark in 1999. It is the owner of trademark registrations in the US and Canada for UCC and UCC TOTAL HOME. These include US 2,413,062 for UCC TOTAL HOME in Class 35 applied for on February 9, 1999 and registered as of December 12, 2000, and CA 583,104 for UCC TOTAL HOME for “buying club services” applied for on February 16, 1999 and registered as of June 4, 2003.

The Complainant was the original registrant of the Domain Name <ucctotalhome.com> as of January 11, 1999, and subsequently maintained the domain and operated a website using the Domain Name until early 2006, when it reportedly inadvertently failed to renew its registration.

The Respondent, Rico Dekker, is a private individual who appears (from inspection of historical records at Archive.org) to have acquired control over the Domain Name at some time after January 11, 2006, when the Complainant reportedly omitted to renew its registration.

 

5. Parties’ Contentions

A. Complainant

The Complainant made a number of contentions in support of the Complaint. Relevant extracts are reproduced here:

The Complainant’s Rights in UCC TOTAL HOME

“Since 1972, [the Complainant] UCC, the largest buying club in North America, has used the name and trademark UCC. For over eight years, UCC has used the name and trademark UCC TOTAL HOME. UCC has used and continues to use the marks UCC and UCC TOTAL HOME in connection with buying club and related services.

“To help protect its trademark rights in its important UCC and UCC TOTAL HOME trademarks and to put others on notice of these rights, UCC has obtained numerous trademark registrations for the marks UCC and UCC TOTAL HOME in the United States and elsewhere. These registrations cover buying club services, transportation and delivery of goods by truck, and related services.

“UCC and its licensed franchisees currently offer its buying club and related services to members at one hundred and twelve (112) DirectBuy centers in the United States as well as twenty-one (21) DirectBuy centers in Canada. When a DirectBuy center closes its doors for any reason, UCC maintains the buying club benefits for its members by offering buying club services using shop-at-home catalogs under its name and mark UCC TOTAL HOME. Currently, UCC is providing UCC TOTAL HOME shop-at-home buying club services to several thousand members throughout the United States.

“Complainant and its franchisees have advertised the UCC Marks through various media and have been written about in the press.” [A representative sampling of Complainant’s advertisements and press clippings featuring the UCC Marks was annexed to the Complaint].

“As a result of the above-described extensive use and promotion, the UCC Marks have become distinctive and well-known and have enjoyed such distinctiveness and notoriety since long prior to the date on which Respondent registered the Domain Name.”

Respondent’s Registration of the Domain Name

“[T]he domain name registration for <ucctotalhome.com> … was purchased by Respondent in a Snapnames auction in February 2006 from Register.com. The creation date for the <ucctotalhome.com> domain name is listed as January 11, 1999, but for many years since this date, UCC owned the <ucctotalhome.com> domain name. When the <ucctotalhome.com> domain name was inadvertently not renewed, upon information and belief, rather than allow the domain name to drop from the zone files, the registrar Register.com retained the domain name and sold it at auction.”

“Complainant did not authorize Respondent to register the Domain Name, nor does it maintain any licensing relationship with Respondent.

“Respondent’s <ucctotalhome.com> Domain Name [was] registered more than seven years after UCC adopted and began using its UCC TOTAL HOME trademark and name and more than five years after UCC registered its UCC TOTAL HOME trademark. Furthermore, Respondent’s Domain Name incorporates the UCC TOTAL HOME trademark in its entirety.

“The domain name <ucctotalhome.com> is identical to Complainant’s UCC TOTAL HOME mark and is confusingly similar to Complainant’s UCC mark since the generic TLD indicator, or ‘.com’ portion of the Domain Name, is not considered in determining whether a domain name is identical or confusingly similar to a trademark. Upon information and belief, Respondent was familiar with the well-known UCC Marks at the time it obtained the registration for the Domain Name, and Respondent intentionally obtained a registration for a domain name that is confusingly similar to the UCC Marks.

“Complainant learned of the Domain Name because Complainant monitors the improper or unauthorized use of the UCC Marks as part of domain names. Complainant diligently enforces its rights in the UCC Marks.”

“Complainant’s attorneys sent a letter to Respondent dated December 14, 2006, which advised Respondent of Complainant’s rights in the UCC Marks, asserted that Respondent’s registration and use of an identical and confusingly similar domain name was a violation of Complainant’s rights, and requested that Respondent immediately discontinue any identical or confusingly similar use of the UCC Marks, or any variation thereof.”

“On December 15, 2006, Respondent emailed Complainant’s attorney and asked for US$14,500 in order to transfer the Domain Name <ucctotalhome.com> to Complainant. Respondent indicated that he paid US$14,000 to register the Domain Name. Through the emails exchanged between Complainant’s attorney and Respondent on December 15-16, 2006, it was clear that Respondent was unwilling to transfer the Domain Name to Complainant without payment of US$14,500.” [Copies of the correspondence were annexed to the Complaint.

“The website at ‘ucctotalhome.com’ currently posts no legitimate content or information.”

“Respondent’s refusal to transfer the Domain Name without payment in excess of Respondent’s cost to register the Domain Name and Respondent’s failure to post any legitimate website information at the web address are evidence that the Respondent registered and is using the Domain Name in bad faith.”

Complainant’s Grounds for Requesting a Transfer

The Complainant further asserts that the Domain Name should immediately be transferred to Complainant for the following reasons:

“The Domain Name <ucctotalhome.com> incorporates Complainant’s entire identical mark UCC TOTAL HOME, as well as Complainant’s entire UCC mark. The Respondent simply added the generic term ‘.com’. It is well settled that the addition of a top level domain, such as ‘.com’, ‘.net’, or ‘.info’, to a trademark is not considered for purposes of determining whether a domain name or mark is identical or confusingly similar.”

“Internet users are likely to be confused as to whether an association exists between the Domain Name and Complainant.

“Consistent with Paragraph 4(c) of the Policy, Respondent has no legitimate interests in the Domain Name, in view of Complainant’s prior statutory and common law rights in the UCC Marks. These rights were established by Complainant’s continuous use in commerce of the UCC trademark and name since at least as early as 1972, and the UCC TOTAL HOME trademark and name since at least as early as 1999.

“Respondent has not used the Domain Name for any legitimate purpose of which Complainant is aware and, upon information and belief, has no intention of using the Domain Name as anything other than a parked page to generate income. Previous ICANN case law has found that non-use or inactivity is insufficient to establish rights or legitimate interests in a domain name.”

“The fact that Respondent registered Complainant’s well-known UCC marks in the Domain Name and has not used the website for any legitimate purpose supports a finding that Respondent’s use is not a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy and, as such, does not create rights or legitimate interests in the disputed Domain Name.”

“Upon information and belief, Respondent’s only use of the Domain Name is as a web portal to numerous third party websites.”

“Thus, Respondent has no rights or legitimate interests in the Domain Name.”

“The Policy establishes that, for purposes of Paragraph 4(a)(iii), ‘bad faith’ registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location. See Policy, Paragraph 4(b)(iv). In addition, ‘bad faith’ registration and use can be established by a showing of circumstances indicating that Respondent registered or has 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 the documented out-of-pocket costs directly related to the domain name. See Policy, Paragraph 4(b)(i).

“By providing links to third party websites, it is clear that Respondent obtained the registration and is using the Domain Name for the bad faith purpose of intentionally attempting to attract users to its website by creating a likelihood of confusion with Complainant’s UCC Marks.”

“Upon information and belief, Respondent receives click-through fees for diverting Internet users to third party websites. Respondent is intentionally attempting to attract users to its website by creating a likelihood of confusion with Complainant’s UCC Marks.”

“Respondent offered to sell the Domain Name to Complainant for $500 more than his [alleged] out-of-pocket costs. Respondent offered to sell the Domain Name to Complainant for the amount of US$14,500.00 even though Respondent indicated that he paid US$14,000.00 to register the Domain Name. An offer to sell a domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name establishes ‘bad faith’ registration under Paragraph 4(b)(i) of the Policy. Previous decisions have found that the offer to sell a domain name for even US$400 sufficient to establish “bad faith” registration under Paragraph 4(b)(i)”.

“Respondent registered a domain name which completely incorporates Complainant’s federally registered and well-known marks. Moreover, Respondent has not used the Domain Name for any legitimate purpose, nor does he have any contemplated use of the Domain Name, other than to collect click-through fees. Thus, upon information and belief, Respondent may have already recouped his investment in the Domain Name, along with a substantial profit, by trading off of the UCC Marks in bad faith. Intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by trading off of the UCC Marks establishes ‘bad faith’ registration and use under Paragraph 4(b)(iv) of the Policy.”

“Respondent has engaged in a pattern of registering domain names which incorporate the well-known trademarks of others in order to collect click-through fees. Respondent made several Internet postings during November and December 2006, in which he claims to completely support himself financially through ‘domain parking.’ [Annexed to the Complaint are] copies of what are believed to be Respondent’s postings on “www.dnforum.com”. Respondent’s pattern of conduct evidences bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy.

“Thus, the Domain Name was registered and is being used in bad faith.”

B. Respondent

The Respondent did not reply and did not respond to any of the Complainant’s contentions.

 

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to the Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that

(i) the contested 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate”. It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

A. Identical or Confusingly Similar

The Complainant claims rights in the mark UCC TOTAL HOME. By way of formal proof, the Complaint includes factual evidence of US and Canadian trademark registrations, which predate the apparent date of acquisition of the Domain Name by the Respondent. (This is a relevant factor to be borne in mind in consideration of the second and third elements of the Policy below.)

In the Panel’s view, the Domain Name <ucctotalhome.com> will be seen and read by any native English speaker as “ucc total home.com”. It is well-established under the Policy that the generic TLD suffix “.com” is not considered as a distinguishing element in the comparison of a relevant mark and the Domain Name.

In the present case, therefore, the Panel has no doubt that, for the purposes of the Policy, the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent 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 itself has offered no explanation to counter the assertions made by the Complainant or otherwise to justify any claim to legitimate or fair use of the Domain Name.

On the evidence submitted with the Complaint, including the purported email statements made by the Respondent, none of which the Respondent has denied, the only preparation the Respondent made was to register an interest with Snapnames to catch the Domain Name if, as inadvertently happened, the previous registrant (i.e. the Complainant) omitted to renew its registration in early 2006. The evidence of the postings at “www.dnforum.com”, attributed to the Respondent (and not challenged by him) is that the Respondent is in the business of acquiring domain names for the value they may have in enabling him to generate click-through revenue. There is no bona-fide offering of goods or services in these circumstances, just a parasitic exploitation of the benefit of goodwill and reputation generated by the real owners of the rights in the corresponding name or mark which is taken in such domain names.

The Respondent is not known by the Domain Name.

The Respondent is not making any legitimate noncommercial or fair use of the Domain Name, but his intent is explicitly to gain commercial benefit for himself from misguided websurfers and potential customers of the Complainant who go to the website at “www.ucctotalhome.com” and are diverted to click-through to other seemingly related sites when they were looking for the Complainant’s site.

Consequently, the Panel accepts the Complainant’s submissions that the evidence supports the conclusion that the Respondent has no rights or legitimate interests in respect of the Domain Name, and the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

It is for the Complainant to prove, for the purposes of the Policy, that the Domain Name “has been registered and is being used in bad faith”.

Under paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:

“(i) circumstances indicating that [Respondent has] registered or […has] 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 [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

The Complainant has asserted that the Respondent’s offer to sell the Domain Name for $14,500 would be evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy, even if this were only $500 more than the Respondent allegedly paid for the Domain Name himself.

However, there is no evidence to support the Respondent’s claim to have actually paid $14,000 to Snapnames for the Domain Name. It is therefore quite conceivable that the Respondent may have inflated his alleged purchase price simply to make the difference to his asking price of $14,500 look more reasonable.

Either way, the sums quoted are far in excess of the basic price for registration of a new “.com” domain name. If the Respondent actually paid $14,000 for the Domain Name, then that is clearly indicative that a substantial added value was perceived for the Domain Name, both by the party responsible for selling it and the Respondent. The Panel doubts that this was just a matter of serendipity and coincidental interest.

The Complainant has also asserted that the Respondent’s admissions in the dnforum postings are evidence of bad faith under paragraph 4(b)(ii) of the Policy. However, even if the Respondent is in the business of exploiting domain names in general, the Complainant has not proven that the Respondent has any other domain names which he may be holding or have held against third party rights. Nor has the Complainant identified any cases of previous Decisions under the Policy against the Respondent.

The Panel considers the example of paragraph 4(b)(iv) of the Policy most directly applicable in the present case.

The evidence shows that the structure of the website operated by the Respondent at “www.ucctotalhome.com” is entirely consistent with use of the Domain Name to divert internet users seeking the Complainant’s business to sites of general household relevance, typically generated from search engine results, with the intention of obtaining commercial gain for the Respondent from the “click-throughs” of the diverted users.

As noted above, in the Panel’s opinion, this is nothing more than parasitic exploitation of the goodwill and reputation built up by the Complainant, with no regard for that goodwill and reputation and in total disregard of the interests of the customers and potential customers who are inevitably misled as a result. The Respondent’s perceived objective is only to generate click-through income for himself.

The Panel has no doubt that this is bad faith use for the purposes of the Policy.

The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ucctotalhome.com> be transferred to the Complainant.


Keith Gymer
Sole Panelist

Dated: April 5, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0058.html

 

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