Home Box Office, Inc. v. Salah Mchichi / HBOSHOP
Claim Number: FA1908001855451
Complainant is Home Box Office, Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, Washington DC, USA. Respondent is Salah Mchichi / HBOSHOP (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hboshop.us>, registered with Tucows Domains Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2019; the Forum received payment on August 1, 2019.
On August 2, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hboshop.us> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@hboshop.us. Also on August 2, 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 August 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
1. Respondent’s <hboshop.us> domain name is confusingly similar to Complainant’s HBO mark.
2. Respondent does not have any rights or legitimate interests in the <hboshop.us> domain name.
3. Respondent registered and uses the <hboshop.us> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, Home Box Office, Inc., has been providing broadcasting, media, and entertainment services since at least 1972. Complainant holds a registration for the HBO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,020,101, registered Sep. 9, 1975).
Respondent registered the <hboshop.us> domain name on June 3, 2019, and uses it to impersonate Complainant and conduct a phishing scheme.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
The Panel finds that Complainant has rights in the HBO mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <hboshop.us> domain name uses Complainant’s HBO mark, and adds a generic term and ccTLD. These changes do not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). Accordingly, the Panel finds that Respondent’s <hboshop.us> domain name is confusingly similar to Complainant’s HBO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <hboshop.us> domain name because Respondent is not commonly known by the disputed domain name. Respondent has no permission to use Complainant’s HBO mark. The WHOIS information for the disputed domain name identifies the registrant as “Salah Mchichi / HBOSHOP” but there is no evidence in the record to support a finding that Respondent is commonly known by the disputed domain. Therefore, the Panel finds that Respondent has no rights under Policy ¶ 4(c)(iii). 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); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).
Complainant argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent previously used the disputed domain name to impersonate Complainant and engage in deceptive and fraudulent conduct to obtain consumers’ financial and other information. The use of a disputed domain name to impersonate or pass off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides historical screenshots of Respondent’s <hboshop.us> domain name that show merchandise related to Complainant’s business. The Panel finds that this use is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant demonstrates that disputed domain name now resolves to an inactive webpage. The Panel finds that this is also not a bona fide offering of goods or services or legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(ii) or (iv). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant shows that Respondent registered and used the <hboshop.us> domain name in bad faith by previously using the domain name to pass off as Complainant. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HBO mark prior to registration of the <hboshop.com> domain name due to the notoriety of Complainant’s mark, and provides multiple articles covering Complainant’s popularity and fame. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the HBO mark prior to registration of the <hboshop.com> domain name, which constitutes bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hboshop.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 24, 2019
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