Marketing Secrets, LLC v Registration Private, Domains By Proxy, LLC

WIPO Case No. DAI2023-0005

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Marketing Secrets, LLC v. Registration Private, Domains By Proxy, LLC

Case No. DAI2023-0005

1. The Parties

Complainant is Marketing Secrets, LLC, United States of America (“United States”), internally represented.

Respondent is Registration Private, Domains By Proxy, LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <russellbrunson.ai> (hereinafter the “Disputed Domain Name”) is registered with

1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2023. connection with the Disputed Domain Name. On March 14, 2023, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing additional 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 Respondent of the Complaint, and the proceedings commenced on March 16, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2023.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 20, 2023. 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.

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4. Factual Background

Complainant offers consulting services, motivational speaking services, and seminars all in the field of owns two United States trademark registrations for the mark RUSSELL BRUNSON (Registration No. 6183876 and 6198123, registered October 27, 2020 and November 17, 2020, respectively) (the “Mark”) and the domain name <russelbrunson.com>.

Respondent registered the Disputed Domain Name on January 13, 2023, long after Complainant registered its RUSSELL BRUNSON Mark. The webpage associated with the Disputed Domain Name is a pay-per-click (“PPC”) advertising webpage featuring links to searches for “marketing agency”, “sales”, and “B2B marketing agency”. These links take users to third-party websites that offer similar services to those offered in connection with the RUSSELL BRUNSON Mark, and, therefore, these third parties compete with Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends its trademark registrations establish rights in the RUSSELL BRUNSON Mark and that the Disputed Domain Name is confusingly similar thereto.

Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain
Name because Respondent has no license, rights, or permission to use the Mark. Complainant alleges that
Respondent’s use of the Disputed Domain Name constitutes cybersquatting, and therefore is illegal.

Complainant argues that the Disputed Domain Name was registered in bad faith, specifically that it was purchased and parked in an attempt to profit off Complainant’s Mark.

B. Respondent

Respondent did not submit a response to Complainant’s complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant’s trademark registrations establish that it has rights in the RUSSELL
BRUNSON mark. The Panel further finds that, because the Disputed Domain Name incorporates
Complainant’s mark entirely, it is identical to Complainant’s registered Mark. See WIPO Overview of WIPO

Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

prima facie

Complainant has presented a case for Respondent’s lack of rights or legitimate interests in the marketing agency”, “sales”, and “affiliate marketing”. As these services are competitive with the services
Disputed Domain Name, which Respondent has not rebutted. The Panel finds that Respondent has no
rights or legitimate interests in the Disputed Domain Name as (i) Respondent is not licensed to use
Complainant’s RUSSELL BRUNSON mark, (ii) Respondent is not affiliated or associated with Complainant,
and (iii) Respondent has not made a bona fide use of the Disputed Domain Name. Specifically, the Disputed

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offered by Complainant under its RUSSELL BRUNSON mark, Respondent is using the Disputed Domain
Name to mislead consumers and derive a commercial benefit through the collection of click-through revenue.
Therefore, Respondent is not making a bona fide use of the Disputed Domain Name. See WIPO Overview
3.0, section 2.9; see also Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708; and
SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No.

D2008-0016.

Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered the Disputed Domain Name in bad faith. The Panel infers that
Respondent was aware of Complainant as the name is not common and it is highly improbable that
Respondent registered the identical Disputed Domain Name for any benign reason, and, in any event,
Respondent has not offered any good faith explanation.

Respondent has used the Disputed Domain Name in bad faith, specifically to direct Internet visitors to a PPC parking page featuring links to competitors, intentionally creating a likelihood of confusion with Complainant’s Mark for Respondent’s financial gain. See Wayfair LLC v. Xiamen Privacy Protection Service Co., Ltd. /

zhang qin, WIPO Case No. D2018-2032; see also StudioCanal v. Registration Private, Domains by Proxy,

LLC / Sudjam Admin, Sudjam Admin, Sudjam LLC, WIPO Case No. D2018-0497).

Based on the confusing similarity between the Disputed Domain Name and Complainant’s Mark, the use of
the Disputed Domain Name to advertise competing services, and Respondent’s failure to respond to the
Complaint, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith,
pursuant to paragraph 4(a)(iii) of the Policy. See Boehringer Ingelheim International GmbH v. 杨智强 (Zhi

Qiang Yang), WIPO Case No. D2023-0132.

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 Disputed Domain Name, <russellbrunson.ai>, be transferred to Complainant.

/Lawrence K. Nodine/
Lawrence K. Nodine
Sole Panelist
Date: May 3, 2023