Deseret Digital Media v. Amir Cohen / Hush Privacy Protection Ltd.
Claim Number: FA1908001859823
Complainant is Deseret Digital Media (“Complainant”), represented by James T. Burton, Utah, USA. Respondent is Amir Cohen / Hush Privacy Protection Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kslclassified.com>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2019; the Forum received payment on August 28, 2019.
On August 30, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <kslclassified.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 September 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@kslclassified.com. Also, on September 10, 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 October 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since August 15, 2000, Complainant has operated continuously a classified ad service from its website at KSL.com.
Complainant holds a registration for the KSL CLASSIFIEDS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,650,426, registered January 8, 2019.
Complainant has invested substantial sums in the development and promotion of the KSL CLASSIFIEDS mark.
As a consequence, the mark has become synonymous with high quality, fair, free and legitimate classified ad services, and Complainant has created substantial goodwill among its customers in connection with the mark.
Complainant therefore has rights in the KSL CLASSIFIEDS mark under the common law running from August 15, 2000.
Respondent registered the domain name <kslclassified.com> on or about February 4, 2005.
The domain name is confusingly similar to Complainant’s KSL CLASSIFIEDS service mark.
Respondent is not licensed or otherwise authorized to use Complainant’s KSL CLASSIFIEDS mark.
There is no evidence to suggest that Respondent has been commonly known by the domain name.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Respondent intends to sell the disputed domain name to the highest bidder.
Respondent uses the domain name to attract Internet users to a website that hosts links to the websites of various Internet enterprises, the operation of which links generates click-through revenue for the benefit of Respondent.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the KSL CLASSIFIEDS mark prior to registering the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 claims rights in the mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. In ordinary circumstances, this is an adequate basis for meeting the threshold standing requirements of the Policy. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
However, the record reflects that, whereas Complainant registered its KSL CLASSIFIEDS service mark in January of 2019, Respondent registered its <kslclassified.com> domain name earlier in time, in February of 2005. This train of events appears on its face to give the benefit of time priority to Respondent’s domain name registration. Complainant seeks to meet this discrepancy with a claim of rights in its KSL CLASSIFIEDS mark under the common law. In support of this claim, Complainant asserts that it has invested substantial sums in the development and promotion of the KSL CLASSIFIEDS mark from August of 2000 to the present, and that, as a consequence, the mark has become synonymous with high quality, fair, free and legitimate classified ad services, and, further, that Complainant has thus created substantial goodwill among its customers in connection with the mark. Because Respondent makes no effort to refute these assertions, we credit them as adequately establishing that the KSL CLASSIFIEDS mark has acquired a sufficient measure of secondary meaning in the marketplace to secure Complainant’s rights in it under the common law, thus satisfying the standing requirements of Policy ¶4(a)(i).
See, for example, Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum January 3, 2018):
Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s [domain name] registration if it can demonstrate established common law rights in the mark.
This holds without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Seychelles). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017), sec. 1.3:
[T]he fact that secondary meaning may exist only in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <kslclassified.com> domain name is confusingly similar to Complainant’s KSL CLASSIFIEDS service mark. The domain name incorporates the mark in its entirety, merely deleting the final “s” and the space between its terms, while adding the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015):
Changing a single letter [in the mark of another in creating a domain name] (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy¶4(a)(i).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
And, on the point of Respondent’s deletion of the space between the terms of Complainant’s mark in framing the domain name, this alteration is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <kslclassified.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <kslclassified.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the KSL CLASSIFIEDS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Amir Cohen / Hush Privacy Protection Ltd.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <kslclassified.com> domain name to attract Internet users to a website hosting links to the websites of various Internet enterprises, the operation of which links generates click-through revenue for the benefit of Respondent. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum September 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's [commercial] benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶4(a)(ii).
We are persuaded by the evidence that Respondent employs the challenged <kslclassified.com> domain name, which we have found to be confusingly similar to Complainant’s KSL CLASSIFIEDS mark, to attract Internet users to a website that hosts links to the websites of various Internet businesses, the operation of which links generates click-through revenue for the benefit of Respondent. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to [websites featuring] products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering [of goods or services] or a legitimate noncommercial or fair use.
See also Dovetail Ventures, LLC v. Klayton Thorpe, FA1625786 (Forum August 2, 2015) (finding, under Policy ¶ 4(b)(iv), that a respondent acted in bad faith in registering and using a domain name where it employed the domain name to host a variety of hyperlinks, unrelated to a UDRP complainant’s business, through the operation of which it presumably gained commercially).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the KSL CLASSIFIEDS mark when the <kslclassified.com> domain name was registered. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith registration of a contested domain name] through the name used for the domain and the use made of it.
See also Finex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018):
Respondent’s prior knowledge is evident from … Respondents use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <kslclassified.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 11, 2019
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