WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instant Domain Search, Inc. v. Mark Cambridge, Thrive Travel Services Ltd.

Case No. D2020-2028

1. The Parties

The Complainant is Instant Domain Search, Inc., Canada, represented by Lewis & Lin, LLC, United States of America.

The Respondent is Mark Cambridge, Thrive Travel Services Ltd., United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <instantdomain.co>, <instantdomain.net>, <instantdomain.org>, <instantdomains.co>, and <instantdomains.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020, with respect to ten disputed domain names. On August 3, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 3, 4, and 5, the Registrars transmitted by email to the Center their verification responses:

(a) confirming they are the Registrars for the respective disputed domain names;

(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint;

(c) indicating the disputed domain names were created on October 10, 2018;

(d) indicating the language of the registration agreements is English;

(e) acknowledging the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).

The Center sent an email communication to the Complainant on August 11, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 12, 2020, with respect to the five disputed domain names listed under Section 2 above.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2020.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 16, 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.

4. Factual Background

The Complainant was established in Canada in 2003. The Complainant provides online domain services including domain name registration and searches.

The Complainant registered the domain name <instantdomainsearch.com> on October 17, 2005. According to the Complainant, since then the domain name has continuously resolved to the website from which the Complainant conducts its business. The sign “Instant Domain Search” has been consistently and continuously used on the site to identify the Complainant’s services.

The Complainant’s services have resulted between 2014 and the end of 2018, in the order of six million visitors to its website. Since 2014, the business has earned over USD 3 million in revenues. According to the Complaint, the Complainant’s service has been mentioned numerous times in publications by reference to its trademark. By way of example, the Complaint identifies references in 11 technical books and 6 blog posts including articles published in 2005 on Techcrunch and Lifehacker and other articles on Lifehacker in 2011 and 2017.

The Complainant has registered INSTANT DOMAIN SEARCH as a trademark in Canada, Registered Trademark No. TMA1005883 in respect of the services “selling domain names” and “Domain name registration; leasing of internet domain names; registration of domain names for identification of users on a global computer network” in, respectively, International Classes 35 and 45. It appears from the print out of the trademark search that the Complainant changed its name from Hartshorne Software Inc. to its current name on January 29, 2020. (Hartshorne is the surname of the Complainant’s founder and chief executive.) The application was filed on April 20, 2017 and registered on October 1, 2018.

On June 4, 2018, the Respondent emailed the Complainant to inquire whether it was interested in selling the disputed domain name. The Complainant rejected that approach.

According to the Registrar, the disputed domain names were created on October 10, 2018.

The disputed domain names resolve to the same website at <businessnamegenerator.com> which, immediately under a prominent text entry box for typing a proposed name includes a link “Check domain availability with GoDaddy”. Among the services being offered at the site is the service “Domain Name Generator” and, if one enters a proposed name in the name generator text entry box, there is a prominent link:

“Click a name to check Domain Availability

Get 70% off your domain purchase with GoDaddy!”

In March 2020, the Complainant successfully brought a complaint against the Respondent in relation to the Respondent’s registration of the domain names <instantdomain.com> and <instantdomains.com>. See Instant Domain Search, Inc. v. Mark Cambridge / Thrive Travel Services Ltd. Claim Number: FA2003001889089. The Respondent registered both of those domain names on October 10, 2018 also. Unlike the present case, the Respondent contested that proceeding. In that proceeding, the Respondent described the nature of its business as operating a domain purchase and resale business. The domain names resolved to a website at <domainify.com> offering services similar to the Complainant’s services and which the panel in that case considered were “strikingly similar in layout and function to that of Complainant”.

According to the Complainant it did not realise at that time that the Respondent had also registered the disputed domain names and it was only after the decision in that case that the disputed domain names started resolving to the <businessnamegenerator.com> website.

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(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 has been registered and is being used in bad faith.

A. Consolidation of complaints

The Complainant has requested consolidation of its complaints as the disputed domain names have been registered in the names of a number of different entities.

Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.

In the present case, three of the disputed domain names are registered in the name of Mr. Cambridge and two are registered in the name of Mr. Cambridge of the corporate Respondent identified above.

In all cases, the physical address and telephone number are the same. The email contacts are different, but are all to addresses “[...]@markcambridge.com”.

Records lodged with Companies House in the United Kingdom show that a Mark Richard Cambridge was a person with significant control over the corporate Respondent as at October 8, 2018.

The several disputed domain names very closely resemble each other and implicate the same trademark rights of the Complainant. As already noted also, the disputed domain names all resolve to the same website.

In these circumstances, the Panel concludes that consolidation of the complaints against each disputed domain name is appropriate as it appears that the individual Respondent and the corporate Respondent are closely connected and acting in a coordinated fashion. Unless it becomes necessary to distinguish between them, the Panel will refer simply to the Respondent for ease of reference.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of Canadian Registered Trademark No. TMA1005883 for INSTANT DOMAIN SEARCH.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) , section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic

Top-Level Domain (gTLD) component or country-code Top-Level Domain (ccTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the TLD components, the disputed domain names simply omit the descriptive word “search” from the Complainant’s registered trademark and, in two cases, use the plural.

In the earlier proceeding, the Respondent argued the two domain names in that case (which apart from the gTLD were the same as in this case) were simply descriptive terms. However, the fact of registration of the Canadian trademark establishes the Complainant’s rights under the Policy for the purposes of this stage of the inquiry which is essentially a standing requirement. In addition, the Complainant has submitted evidence essentially supporting a finding that it has likely acquired unregistered or common law rights in its trademark. See e.g.,WIPO Overview 3.0, section 1.3.

The main difference between the Complainant’s trademark and the disputed domain names is that the latter omit the word “search”. Some also add an “s”, so that they read as plurals, but that is a much less noticeable difference. See WIPO Overview 3.0, section 1.9. In this context, the word “search” is descriptive. As with the cases where the addition of such a term does not avoid a finding of confusing similarity (WIPO Overview 3.0, section 1.8), so its omission in this case does not affect the analysis. The words “instant” and “domain” are combined in the same order and same way in both the Complainant’s trademark and the disputed domain names. Accordingly, the Complainant’s trademark is visually and aurally recognisable within the disputed domain names.

In these circumstances, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it.

The disputed domain names are plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain names.

The Respondent uses each disputed domain name as a billboard or sign directing potential customers to the <businessnamegenerator.com> website. The use of a confusingly similar domain name to direct traffic to the business competitor of the trademark owner typically does not qualify as a good faith offering under the Policy. In the present case, the Respondent is using its confusingly similar disputed domain names in this fashion with knowledge of the Complainant and its trademark as the email from the Respondent to the Complainant on June 4, 2018 shows. Moreover, so far as the record in this case discloses, the Respondent started using the disputed domain names to direct traffic to the <businessnamegenerator.com> competitor website only after the successful complaint in the earlier proceeding.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

D. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

As already indicated above, it is clear from the June 4, 2018 email that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain names. Nonetheless, the Respondent proceeded to register the disputed domain names in the face of the Complainant’s rights at the same time as it registered the domain names in issue in the earlier case. As the panel in the earlier case found, the Respondent proceeded to use the domain names the subject of the earlier case to resolve to a website competing with the Complainant’s services and which had a striking resemblance to the Complainant’s website. In those circumstances, the Panel infers that the Respondent registered the disputed domain names for the same purpose. At the very least, the Respondent must have been aware that the use of the disputed domain names would be likely to cause confusion in the face of the Complainant’s long and extensive use. Accordingly, the Panel finds that the Respondent registered the disputed domain names in bad faith.

The manner of the Respondent’s use of the disputed domain names after the decision in the earlier proceeding compounds the situation and likewise qualifies as use in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. Decision

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 names <instantdomain.co>, <instantdomain.net>, <instantdomain.org>, <instantdomains.co>, and <instantdomains.org> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: September 28, 2020