Convoso, Inc. v Renal Roberty, got prep llc

WIPO Case No. DIO2024-0029

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Convoso, Inc. v. Renal Roberty, got prep llc.

Case No. DIO2024-0029

1. The Parties

Complainant is Convoso, Inc., United States of America (“United States”), represented by FOUNDATION

LAW GROUP LLP, United States.

Respondent is Renal Roberty, got prep llc., United States.

2. The Domain Name and Registrar

The disputed domain name <convoso.io> (the “Domain Name”) is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2024. On October 3, 2024, 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 disclosing registrant and contact information for the Domain Name, which differed from the named Respondent (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email to Complainant on October 4, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 4, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain
Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name
Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 30, 2024.

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The Center appointed Robert A. Badgley as the sole panelist in this matter on November 1, 2024. 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

Complainant asserts that it has used the mark CONVOSO for its telephone dialing, contact center and marketing services nationally and exclusively since at least 2016.

Complainant holds a registered trademark for CONVOSO with the United States Patent and Trademark Office (“USPTO”), Reg. No. 5,914,018, registered on November 19, 2019 in connection with “Software as a service (SAAS) services featuring software for contact center management, consisting of calling, SMS, voice broadcasting, Email, ringless voicemail, and conversational AI agent features; Design, development, and implementation of software for contact center management, consisting of calling, SMS, voice broadcasting, Email, ringless voicemail, and conversational AI agent features; Providing temporary use of non- downloadable cloud-based software for contact center management, consisting of calling, SMS, voice broadcasting, Email, ringless voicemail, and conversational AI agent features.” This registration indicates an April 2018 date of first use in commerce.

Complainant also holds a registered trademark for CONVOSO CLEARCALLERID, USPTO Reg. No. 7,190,514, registered on October 10, 2023 in connection with, among other things, “Application service provider (ASP) featuring software for use by users enabling contact center management and caller ID quality management, allowing users to stay ahead of call flagging and blocking by maintaining higher contact rates and lowering lead costs, allowing users to spread call volume across phone numbers to limit the risk of being flagged and blocked, allowing numbers to be registered with the caller ID name database so carriers further limit the probability that phone numbers will be flagged or blocked,” with an April 6, 2021 date of first use in commerce.

Complainant owns the domain name <convoso.com> and uses that domain name to host its commercial website.

The Domain Name was registered on April 13, 2023. The Domain Name resolves to a website purporting to offer consumers various services, such as “Call Center Consultation,” “Leads Generation Campaigns,” “Pay Per Call Projects,” and others. The site encourages users to “Scale Your Contact Center.” According to

Complainant:

“The only perceivable use of the domain has been to re-route Complainant’s legitimate customers, those
looking for Complainant’s contact center services website of the same name, generate web traffic, contact
information and thus revenues for Respondent in bad faith.”

Complainant alleges that it sent a cease-and-desist letter to Respondent on August 19, 2024, and did not receive any response. The letter is not annexed to the Complaint.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of the
Domain Name.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element of the UDRP functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.71.

The Panel concludes that Complainant has rights in the trademark CONVOSO through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to

use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering
of goods or services; or

(ii)       you [Respondent] (as an individual, business, or other organization) have been commonly known by

the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. On this undisputed record, the Panel finds that it is more likely than not that Respondent had Complainant’s CONVOSO mark in mind when registering the Domain Name. This finding is based on the fact that the services purportedly offered at Respondent’s overlap significantly with the services that Complainant offers under the CONVOSO mark. Respondent’s evident free-riding on Complainant’s mark for commercial purposes cannot be regarded as vesting Respondent with legitimate interests in the Domain Name.

Complainant has established Policy paragraph 4(a)(ii).

1 Given the similarities between the .IO Policy and Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and Rules, the Panel finds UDRP precedent generally to be relevant to this case (except to the extent of relevant differences between the policies, such as the absence of a conjunctive requirement for bad faith). See IOTA Foundation v. Privacy Service provided by Withheld for Privacy ehf /Super Green, WIPO Case No. DIO2022-0001.

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C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration or use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily

for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant
who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable
consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       that Respondent has registered the Domain Name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name, provided that Respondent has
engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial

gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location or of a product or service on Respondent’s website or location.

Although a transfer may occur under the Policy (for .io domain names) with a showing of either bad faith registration or bad faith use, the Panel concludes on this record that Respondent has both registered and used the Domain Name in bad faith. The Panel incorporates here its discussion above in the “Rights or

Legitimate Interests” section.

Given the identical nature of the Domain Name to Complainant’s trademark, and the content of quoted Policy paragraph 4(b)(iv).

Respondent’s website, the Panel concludes that it is more likely than not that Respondent targeted

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

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 <convoso.io> be transferred to Complainant.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: November 15, 2024