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#Secrets with benefits : Imposter brand #domain lost via the UDRP process

Secret Benefits is a relationships app, promising to bring “generous and attractive people” together.

The company has over 1 million members, and its active Google Ads use keywords such as “Wealthy Sugar Daddies, Beautiful Sugar Babies.”

Secret Benefits is owned by Cyprus-based Oboleo Ltd. and operates from the domain SecretBenefits.com. The company has registered SECRET BENEFITS as a trademark with the USPTO.

Oboleo Ltd. filed a UDRP against the domain SecretsWithBenefits.com, and its Chinese registrant. The Complainant was represented by IP attorney, John Berryhill.

The Respondent did not respond and the decision delivered a finding for the Complainant, ordering the domain SecretsWithBenefits.com to be transferred. Full details on the decision follow:

Oboleo Ltd. v yang xiang

Claim Number: FA2012001926219

PARTIES

Complainant is Oboleo Ltd. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is yang xiang (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <secretswithbenefits.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Darryl C. Wilson, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 23, 2020; the Forum received payment on December 23, 2020.

On December 24, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <secretswithbenefits.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@secretswithbenefits.com. Also, on December 29, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On January 21, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Oboleo Ltd., is the owner and operator of an online dating website. Complainant has rights in the SECRET BENEFITS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,958,569, registered Jan. 14, 2020). Respondent’s <secretswithbenefits.com> domain name is confusingly similar to Complainant’s mark since it is a minor variation of the mark, merely adding the letter “s,” the term “login,” and the “.com” generic top-level domain (“gTLD”).

Respondent does not have rights or legitimate interests in the <secretswithbenefits.com> domain name because Complainant did not authorize or license Respondent to use the SECRET BENEFITS mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant and promote competing services.

Respondent registered and uses the <secretswithbenefits.com> domain name in bad faith. Respondent uses the disputed domain name to redirect Internet traffic to Complainant’s competitor.

B. Respondent

Respondent failed to submit a Response in this proceeding.
FINDINGS

Complainant is Oboleo Ltd. (“Complainant”), of Nicosia, Cyprus. Complainant is the owner of the USA registration for the mark SECRET BENEFITS which it has continuously used since at least as early as 2016 in connection with its provision of online dating services for individuals. Complainant also established a website for its business in 2016 at <secretbenefits.com>.

Respondent is Yang Xiang (“Respondent”), of Sichuan, China. Respondent’s registrar’s address is indicated as Scottsdale, AZ, USA. The Panel notes that the disputed domain name was registered on or about April 18, 2020.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant asserts rights in the SECRET BENEFITS mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 5,958,569, registered Jan. 14, 2020). The Panel here finds that Complainant has rights in the SECRET BENEFITS mark under Policy ¶ 4(a)(i).

Complainant argues that Respondent’s <secretswithbenefits.com> domain name is confusingly similar to Complainant’s mark since it is a minor variation of the mark, merely adding the letter “s,” term “with,” and the “.com” gTLD. Per Policy ¶ 4(a)(i), minor additions to a mark such as letters, generic or descriptive terms, and/or a gTLD may be insufficient to negate confusing similarity between a domain name and the mark. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). The Panel here finds that the disputed domain name is identical or confusingly similar to the SECRET BENEFITS mark under Policy ¶ 4(a)(i).

Respondent raises no contentions regarding Policy ¶ 4(a)(i).

The Complainant has proven this element.

Rights or Legitimate Interests

The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.

Complainant argues that Respondent does not have rights or legitimate interests in the <secretswithbenefits.com> domain name because Complainant did not authorize or license Respondent to use the SECRET BENEFITS mark. Lack of authorization to use a mark, along with relevant WHOIS information, can support a finding that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(a)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Here, the WHOIS information lists “Yang Xiang” as the registrant of the disputed domain name and nothing in the record provides any evidence that Complainant authorized Respondent’s use of the SECRET BENEFITS mark. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

Complainant further contends that Respondent fails to use the <secretswithbenefits.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead passes off as Complainant to promote competing services. Use of a disputed domain name in competition with a Complainant is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Here, Complainant claims that the resolving webpage purports to offer online dating services in competition with Complainant and notes that clicking the “sign up” button on the page redirects users to a known competitor of Complainant. Complainant provides a screenshot of the resolving page at the disputed domain as evidence in support of its claims. The Panel here finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i).

Respondent raises no contentions regarding Policy ¶ 4(a)(ii).

The Complainant has proven this element.

Registration and Use in Bad Faith

Complainant claims that Respondent registered and uses the <secretswithbenefits.com> domain name in bad faith because Respondent uses the disputed domain name to redirect Internet traffic to Complainant’s competitor. Use of a disputed domain name to promote goods and/or services that compete with a complainant may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). As previously noted, Complainant provides a screenshot of the website resolving at the disputed domain, claiming that the services offered are in direct competition with Complainant’s business. The Panel here finds Respondent’s website’s links to Complainant’s competitors’ sufficient evidence of bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv).

Respondent raises no contentions regarding Policy ¶ 4(a)(iii).

The Complainant has proven this element.

DECISION

As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

Accordingly, it is Ordered that the <secretswithbenefits.com> domain name be TRANSFERRED from Respondent to Complainant.

Darryl C. Wilson, Panelist

Dated: February 8, 2021


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