Now that hits the spot - infringing domain name transferred

In TPS Parking Management, LLC v. Liujunyao, WIPO Case No. D2018-2252 (Douglas Clark, December 11, 2018), the Panel ordered the transfer of theparkingspotcoupon.com to TPS Parking Management, LLC, owner of the THEPARKINGSPOT and SPOT trademarks. The individual Respondent did not submit a response.

As always, Complainant was tasked with satisfying the three elements of a UDRP claim, namely:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. The disputed domain name has been registered and used in bad faith.

These elements are discussed in turn below.

Regarding the first element, the Panel readily determined that the disputed domain was confusingly similar to Complainant's trademark, as the disputed domain includes the entirety of the THEPARKINGSPOT trademark, with the mere addition of the dictionary term "coupon," "which is a term that would attract Internet users to enter and promote the Complainant's services." It is noted that Complainant did not own a registered trademark in China, Respondent's country of residence, but the Panel held that "ownership of a trademark is generally considered to be a threshold issue," and thus found Complainant's registration outside of China sufficient.

Regarding the second element, the Panel acknowledged that while the initial burden is on Complainant to make a prima facie case that Respondent lacks legitimate rights or interests in the disputed domain, once such a showing has been made, the burden shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in said domain. With that said, Complainant made the prima facie case by demonstrating relevant trademark rights and asserting that Respondent had no relationship with Complainant. As Respondent filed no response, the second element was satisfied based upon Complainant's assertions alone.

Finally, the Panel had "no hesitation" in concluding that the disputed domain was registered and used in bad faith. "It is likely the Respondent knew of the Complainant when it registered the disputed domain name, as it comprises the Complainant's mark in full." Additionally, "the current 'pay-per-click' advertisements for online gambling and the various links of miscellaneous articles on the site suggest the Respondent is making a commercial gain from the site."