Dave McMeekin / Images by Piedmont Portraits v. Lyubov Stepanova
Claim Number: FA1908001858228
Complainant is Dave McMeekin / Images by Piedmont Portraits (“Complainant”), represented by James M. Bagarazzi of Dority & Manning, Attorneys at Law, P.A., South Carolina, USA. Respondent is Lyubov Stepanova (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imagesbypiedmontportraits.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2019; the Forum received payment on August 20, 2019.
On August 20, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <imagesbypiedmontportraits.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 August 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@imagesbypiedmontportraits.com. Also on August 22, 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 September 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is in the portrait photography business. Complainant has common law rights in the IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks. Respondent’s <imagesbypiedmontportraits.com> domain name is identical or confusingly similar to Complainant’s mark, as Respondent fully incorporates Complainant’s IMAGES BY PIEDMONT PORTRAITS mark and merely adds the “.com” generic top-level domain (gTLD).
Respondents has no rights or legitimate interests in the <imagesbypiedmontportraits.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use as Respondent is using the domain name to distribute adult oriented material and pay-per-click hyperlinks.
Respondent registered and used the <imagesbypiedmontportraits.com> domain name in bad faith as Respondent is attempting to attract Internet users for financial gain through pay-per-click fees. Additionally, Respondent is distributing adult oriented material or redirecting users to other domain names that distribute adult oriented material. Furthermore, Respondent falsified WHOIS information. Finally, Respondent had actual knowledge of Complainant’s rights in its mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the portrait photography business.
2. Complainant has established its common law trademark rights in the IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks.
3. Respondent registered the <imagesbypiedmontportraits.com> domain name on May 18, 2019.
4. Respondent is using the domain name to distribute adult oriented material and pay-per-click hyperlinks.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it holds common law rights in the IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant provided evidence that it has done business under the mark for the last 6 years taking school portraits and used the disputed domain name as a main business website until the registration expired in April of 2019. See Compl. Annexs. A-F, O. It is apparent from the evidence and the use that, over the years, Complainant has made of the IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks in its business that each expression has become synonymous with Complainant and become recognized as the source of Complainant’s goods and services. The Panel therefore finds that Complainant does hold common law rights in the IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks for the purposes of Policy ¶ 4(a)(i) and that it has held them at least for the last 6 years and prior to the registration of the disputed domain name on May 18, 2019.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks. Complainant argues Respondent’s <imagesbypiedmontportraits.com> domain name is identical or confusingly similar to Complainant’s IMAGES BY PIEDMONT PORTRAITS mark as Respondent fully incorporates Complainant’s mark and merely adds the “.com” gTLD. Merely adding a gTLD to a fully incorporated mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i), See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Alternatively, Complainant argues that Respondent merely adds the generic term “images by” to Complainant PIEDMONT PORTRAITS mark. The mere addition of a generic word or term may not sufficiently distinguish a disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds Respondent’s <imagesbypiedmontportraits.com> domain name is identical to Complainant’s IMAGES BY PIEDMONT PORTRAITS mark and confusingly similar to Complainant’s PIEDMONT PORTRAITS mark under Policy ¶ 4(a)(i),
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks and to use them its domain name;
(b) Respondent registered the <imagesbypiedmontportraits.com> domain name on May 18, 2019;
(c) Respondent is using the domain name to distribute adult oriented material and pay-per-click hyperlinks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <imagesbypiedmontportraits.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “Lyubov Stepanova” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Compl. Annex. M. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <imagesbypiedmontportraits.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <imagesbypiedmontportraits.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the domain name to distribute adult oriented material and pay-per-click hyperlinks. Generally, use of a disputed domain name to distribute adult oriented materials may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Additionally, hosting pay-per-click hyperlinks for unrelated goods may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provided screenshots of the <imagesbypiedmontportraits.com> domain name’s resolving webpage, which redirects Internets users to various sites that show adult oriented content and links to other sites that distribute adult oriented content. See Compl. Annex. H-K. Therefore, the Panel finds Respondent fails to use the <imagesbypiedmontportraits.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the <imagesbypiedmontportraits.com> domain name in bad faith as Respondent is attempting to attract Internet users for financial gain by offering advertisements. Registration and use of a disputed domain name to offer or direct users to advertisements for financial gain can be evidence of bad faith under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain). Here, Complainant provided screenshots of the <imagesbypiedmontportraits.com> domain name’s resolving webpage, which redirects Internets users to various sites that show adult oriented content and links to other sites that distribute adult oriented content, and presumably receiving a fee. See Compl. Annex. H-K. Therefore, the Panel finds Respondent registered and used the <imagesbypiedmontportraits.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent registered and used the <imagesbypiedmontportraits.com> domain name in bad faith as Respondent is distributing adult oriented materials or redirecting users to the resolving sites of other domain names that distribute adult oriented materials. Registration and use of a disputed domain name to offer adult oriented materials may be evidence of bad faith under Policy ¶ 4(a)(iii). Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant provided screenshots of the <imagesbypiedmontportraits.com> domain name’s resolving webpage, which redirects Internets users to various sites that show adult oriented content and links to other sites that distribute adult oriented content. See Compl. Annex. H-K. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent registered and used the <imagesbypiedmontportraits.com> domain name in bad faith, as Respondent did not respond to Complainant’s cease and desist letter. Failure to respond to a cease-and-desist letter can be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant provided a copy of the letter sent, See Compl. Annex. L. Therefore, the Panel finds Respondent registered and used the <imagesbypiedmontportraits.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had knowledge of Complainant’s rights in the IMAGES BY PIEDMONT PORTRAITS mark at the time of registering the <imagesbypiedmontportraits.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP prior decisions generally do not find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant argues that it is inconceivable that Respondent could have come up with the disputed domain name on its own. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii) and the Panel so finds.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the IMAGES BY PIEDMONT PORTRAITS and PIEDMONT PORTRAITS marks and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <imagesbypiedmontportraits.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 17, 2019
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