The Complainant is FlexReceipts, Inc. of Orlando, Florida, United States of America (“United States”), represented by Lewis & Lin, LLC, United States.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Anthony Palmer of Irvine, California, United States.
The disputed domain name <flexreceipts.net> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2017, 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 March 22, 2017.
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 March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on April 27, 2017. 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 date of the Domain Name registration was confirmed by the Registrar to be January 8, 2017.
The trademark FLEXRECEIPTS serves as a mark of the Complainant and the Complainant claims common law rights by virtue of extensive use in the mark. The Complainant provided evidence of use and reputation in its mark, together with a copy of pending application No. 87364927 with the United States Patent and Trademark Office (“USPTO”) for the mark FLEXRECEIPTS for “Computer services, namely, electronic digitizing of receipts, and providing customer engagement and marketing; Providing a website featuring on-line non-downloadable software that enables users to offer digital receipts, customer engagement, and marketing tools/services; Software as a Service (SAAS) services featuring software for processing, analyzing, sharing, and/or integrating user and business data.”
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with an error message, and the website currently appears to be inactive.
Since the Respondent did not respond to this Complaint, the facts regarding the use and notoriety of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
To summarize the Complaint, the Complainant is the owner by common-law use in the United States of the trademark FLEXRECEIPTS in respect of, inter alia, electronic receipts, by virtue of extensive use for at least five years, together with use of the domain name <flexreceipts.com>. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic top-level domain (“gTLD”) “.net” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered under a privacy proxy and is being used in bad faith as a basis for a targeted “phishing” scheme. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
In this case, based on the evidence provided that was not refuted, the Panel believes that the Complainant has offered sufficient evidence of use of the mark in trade or commerce for at least five years to establish unregistered or common law trademark rights in the United States to satisfy the first element under paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. The gTLD “.net” does not prevent a finding of identity or confusing similarity between the Domain Name and the Complainant’s trademark. See, e.g., Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Turkcell Iletisim Hizmetleri A.S. v. Domain Admin, PrivacyProtect.org / tuncer altintopak, WIPO Case No. D2010-2206.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy 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, 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 consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Complainant also asserts that the Respondent used emails, under the Domain Name as part of an email phishing scheme.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name (and which also informs the third element of the Policy discussed further below).
Therefore, the Complainant has satisfied the second under paragraph 4(a)(ii) of the Policy.
The Panel is persuaded by the evidence presented, and which was not refuted, that the Respondent attempted to trade on the Complainant’s name and reputation using the Complainant’s trademark FLEXRECEIPTS in the Domain Name as part of an email phishing scheme in which it impersonates the Complainant and thereby could trick third parties as to the source of the service and into potentially revealing sensitive personal information to the Respondent.
Even where the Domain Name resolves to an “error” page, the Panel does not believe that it changes the finding.
The Panel also finds compelling the Complainant’s argument that where, as in this case, the Respondent has failed to show rights or legitimate interests in the Domain Name, registration and use in bad faith can commonly be inferred, citing Imerys v. Unknown (gfg fdgdf, dfgdfg), WIPO Case No. D2007-0045. The Respondent appears to have acquired the Domain Name primarily for the purpose of targeting the Complainant’s mark in furtherance of a phishing scheme, which creates consumer confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name, and to target the Complainant’s trademark and customers, and diverting its users into a phishing scheme.
In addition, the Respondent originally obtained the Domain Name under a Privacy Protection. The use of such a privacy protection, canbe further evidence of bad faith. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
Given the evidence, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and used it for the purpose of misleading and diverting Internet traffic.
Accordingly, the Panel finds that the Complainant has satisfied the third requirement as the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <flexreceipts.net> be transferred to the Complainant.
Ellen B Shankman
Date: May 7, 2017
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