Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo
Case No. D2019-1600
1. The Parties
The Complainant is Redbox Automated Retail, LLC d/b/a Redbox, United States of America, represented by Neal, Gerber & Eisenberg, United States of America (“USA”).
The Respondent is Milen Radumilo, Barbados.
2. The Domain Name and Registrar
The disputed domain name <eedbox.com> (“Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019. On July 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 12, 2019. 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 is a limited liability company offering entertainment products and services in the USA. The Complainant is the owner of, inter alia, the mark REDBOX, registered in the USA under the trademark No. 2919854 on January 18, 2005, in classes 9, 21, 23, 26, 36, and 38, and used since 2003. It owns “redbox.com” which is also registered as a trade mark.
The Domain Name registered in February 28, 2019, has been used for pay-per-click links referencing the Complainant and pointing to competing services also.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of, inter alia, the mark REDBOX, registered in the USA for entertainment and used since 2002. It owns “redbox.com”, which is also registered as a trade mark.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s trade mark, designed to be so as a typosquatting registration, replacing only the “r” with an “e” and adding the generic Top-Level Domain (“gTLD”) “.com” neither of which prevent said confusing similarity.
The Respondent has been the subject of adverse findings in a number of UDRP cases including six cases involving typosquatting of third party well known marks.
The Respondent does not have rights or a legitimate interest in the Domain Name, is not commonly known by the Domain Name and is not authorised by the Complainant. He is not asking a legitimate noncommercial or fair use of the name. The use is confusing and intentionally seeking to trade on the Complainant’s name and so cannot be a bona fide offering of goods or services. It is registration and use in bad faith. Typosquatting is bad faith per se.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of a misspelling of the Complainant’s REDBOX mark (registered in the USA for entertainment related goods and services as of 2005) and the gTLD “.com”.
The Panel agrees with the Complainant that misspellings such as replacement of a letter such as the replacement here of an “r” with an “e” and the addition of gTLD “.com” does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy. As a typosquatting registration it is designed to confuse.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorised the Respondent to use its trademark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has pointed to a site with pay per click links. The latter use is commercial, so cannot be legitimate noncommercial or fair use. There is no indication that there is no authorisation from the Complainant and some of the links mention the Complainant’s mark. The Panel finds this use is intended to confuse. As such it cannot amount to the bona fide offering of goods and services.
Typosquatting is a further indication of a lack of rights or legitimate interest in Domain Name.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing a misspelling version of the Complainant’s mark in what appears on the face of it to be a typosquatting registration.
Typosquatting itself is evidence of relevant bad faith registration and use.
In the opinion of the Panel, the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe the Domain Name is connected to or approved by the Complainant as it offers links mentioning the Complainant’s mark and links to competitors of the Complainant under a sign confusingly similar to the Complainant’s mark. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant under Policy 4 (b)(iii) and (iv).
The Respondent has been the subject of several adverse decisions under the UDRP including typosquatting of other well known third party marks which demonstrates a pattern of such conduct.
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and is being used in bad faith under Policy 4(b)(ii), (iii) and (iv).
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 <eedbox.com> be transferred to the Complainant.
Dawn Osborne Sole Panelist Date: August 16, 2019
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