Topix LLC v. Matthew Newberry
Claim Number: FA1904001841193
Complainant is Topix LLC (“Complainant”), represented by Justin S. Kim of Lewis Brisbois Bisgaard & Smith LLP, California, USA. Respondent is Matthew Newberry (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <topix2.com>, registered with Google LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2019; the Forum received payment on April 30, 2019.
On April 30, 2019, Google LLC confirmed by e-mail to the Forum that the <topix2.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 May 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2019 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@topix2.com. Also on May 1, 2019, 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 May 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the <topix.com> website, providing visitors with entertainment, pop culture, and news related content. Complainant has rights in the trademark TOPIX based upon its use in commerce since 2005 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <topix2.com> domain name, registered on January 14, 2019, is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s TOPIX mark, and merely adds the descriptive numeral “2” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <topix2.com> domain name because Respondent is not authorized to use Complainants TOPIX mark and is not commonly known by the disputed domain name.
Respondent registered and uses the <topix2.com> domain name in bad faith because the disputed domain name is primarily used to disrupt Complainant’s business. Furthermore, Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Additionally, Respondent registered the disputed domain name with a privacy service and failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual knowledge of Complainant’s TOPIX mark prior to registering the disputed domain name as evidenced by its use of the disputed domain name for similar services as those provided by Complainant and its use of a pineapple logo that is similar to the logo used on Complainant’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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”).
Complainant asserts rights in the TOPIX mark based upon its use in commerce and its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds that Complainant has rights in the TOPIX mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <topix2.com> domain name is confusingly similar to Complainant’s TOPIX mark because it wholly incorporates the mark and merely adds the descriptive numeral “2” and the “.com” gTLD. The additions of numbers and the “.com” gTLD are generally considered insufficient to overcome a finding of confusing similarity. See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). Therefore, the Panel agrees with Complainant and finds that Respondent’s disputed domain name is confusingly similar to the Complainant’s TOPIX mark.
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Complainant argues that Respondent has no rights or legitimate interests in the <topix2.com> domain name under Policy ¶ 4(c)(ii) as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the TOPIX mark. Where a response is absent, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, Complainant provides WHOIS information for Respondent indicating that Respondent is listed as either “Matthew Newberry” or “Contact Privacy Inc. Customer 1243740775” and no information of the record indicates that Respondent is known otherwise or was authorized to use the Complainant’s TOPIX mark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
It is noted that Complainant does not make any arguments under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). This is highly unusual, especially in light of the fact that Complainant is represented by counsel. In any event, this raises the question of whether it is required for a complainant to address each of the elements of ¶ 4(c) in order to satisfy its burden of proof under Policy ¶ 4(a)(ii).
Rule 3(b)(ix)(3) states that “[t]he description should, for elements (2) and (3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable.” (emphasis added). The word “should” is the past tense of the word “shall” and there is a question as to whether this denotes a mandate or merely an encouragement. In its definition of the word “should” Black’s Law Dictionary states that it is “ordinarily implying duty or obligation; although usually no more than an obligation of propriety or expediency… it does not ordinarily express certainty as ‘will’ sometimes does.” Further, while this same resource defines the word “shall” as “generally imperative or mandatory” it also states that “it may be construed as merely permissive or directory (as equivalent to ‘may’), to carry out the legislative intention and in cases where no right or benefit to any one depends on its being taken in the imperative sense, and where no public or private right is impaired by its interpretation in the other sense.” Guidance for this definition is derived from the United States Supreme Court decision in Railroad Company v. Hecht, 95 U.S. 168 (1877), wherein the court held that “As against the government, the word ‘shall,’ when used in statutes, is to be construed as ‘may’ unless a contrary intention is manifest."
As to any right being impaired by interpretation of the word “should” as permissive in the present context, the language of Policy ¶ 4(c) indicates that it is clearly directed to respondents (e.g., “How to Demonstrate Your Rights…” and “Any of the following circumstances … shall demonstrate your rights or legitimate interests….” (emphasis added). Thus, it is a respondent’s opportunity to submit evidence and arguments under the categories mentioned in Policy ¶ 4(c) and not a complainant’s obligation to refute them. Thus, any impairment can only occur where a respondent itself fails to submit a response or evidence, or to otherwise participate in a case.
It is also noted that the certification that is mandatory at the conclusion of every complaint under Rule 3(c) states that the information in the complaint is “complete and accurate”. However, there is no requirement that this certification applies only to the written portion of the complaint. A complainant’s burden of proof may be satisfied by the totality of the case and the evidence presented to the Panel. HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited v. PHMC GPE, FA 1658722 (Forum Mar. 14, 2016) (finding that Respondent was not the owner or beneficiary of a trade or service mark identical to the disputed domain name under Policy ¶ 4(c)(i), even when Complainant did not argue this point); Danny Hood v. Private Registration/ Real Estate Educational Programmes / Dave Lovegrove, D2013-0723 (WIPO June 25, 2013) (“despite the brevity of the Complaint, all the facts of this case allow a decision to be made”).
In light of the foregoing analysis, despite the Complainant’s failure to address Policy ¶ 4(c)(i) and (iii) in the body of its Complaint, the Panel will proceed to consider the issues raised by these sub-sections in light of the totality of evidence presented in this case.
Complainant submits into evidence a screenshot of the website that resolves from the <topix2.com> domain name as well as copies of a Twitter feed @Topix2.com that promotes the domain and its website. The website displays links to various subject categories including “Entertainment”, “National News”, “Politics”, and “Sports” and these links redirect users to third-party sites, some of which are commercial in nature. The page also contains a pineapple logo, the copyright notice “© 2019 Topix2.com” and a link to the above-mentioned Twitter feed. This feed, in turn, contains links to the <topix2.com> website as well as various entertainment and general interest news items along with many hashtags relating to the subjects of these items. Use of a disputed domain name to impersonate a complainant may not be considered a bona fide offer of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Snap Inc. v. Amr Atef, FA 1833269 (Forum Apr. 2, 2019) (resolving to a page that displays the Complainant’s name and a similar logo does not amount to the bona fide offering of goods and services). From the evidence presented, particularly the use of the TOPIX mark and a very similar pineapple logo to offer entertainment and news stories, the Panel concludes that Respondent’s website is seeking to impersonate or compete with Complainant’s <Topix.com> website. This does not constitute a bona fide offer of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
In light of the evidence presented and in the absence of any response, evidence, or other submission by the Respondent, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent had actual notice of Complainant’s rights in the TOPIX mark as the result of Complainant’s use of the mark predating the date on which respondent registered <topix2.com> domain name along with Respondent’s promotion of similar content and use of a similar logo. Actual knowledge of a complainant’s mark prior to registering a confusingly similar domain name can provide a basis for a finding of bad faith registration under Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). In light of Respondent’s use of the unusually spelled word “Topix”, its offering of entertainment and news services, and its use of a pineapple logo on its website that is similar to the Complainant’s logo, the Panel finds that Respondent had actual notice of Complainant’s rights in the TOPIX mark and thus registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant further claims that Respondent disrupts Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Using a confusingly similar domain name in a manner disruptive of a complainant’s business by trading upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). Complainant provides a screenshot of the resolving webpage associated with the domain name, which displays the name “Topix2” and a pineapple logo while purporting to offer an online forum for discussing various entertainment and news stories. Complainant also points out that there are links on the resolving webpage redirecting users to third-party sites, some of which are commercial in nature. In the absence of any response or other submission by the Respondent, the Panel agrees with Complainant that Respondent’s activities disrupt Complainant’s business and seek to commercially benefit from confusion with Complainant’s TOPIX mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <topix2.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 29, 2019
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