Avery Kusmierski Singer v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2012001923493
Complainant is Avery Kusmierski Singer (“Complainant”), represented by Robert Clarida of Reitler Kailas & Rosenblatt, New York, USA. Respondent is Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <averyksinger.com>, registered with NameSilo, 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 December 1, 2020; the Forum received payment on December 1, 2020.
On December 2, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <averyksinger.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2020 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@averyksinger.com. Also on December 7, 2020, 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 December 31, 2020, 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 has common law trademark rights in the AVERY K. SINGER mark as the mark was first used in commerce not later than 2010 in connection with visual art services, namely the creation and exhibition of paintings and other words of fine art by Complainant. Additionally, the AVERY K. SINGER mark was used in the URL of Complainant’s own website <averyksinger.com>. Complainant failed to renew its domain name and, on November 11, 2019, Respondent registered the <averyksinger.com> domain name. This disputed domain name is identical or confusingly similar to Complainant’s AVERY K. SINGER mark as it incorporates Complainant’s mark and merely adds the gTLD “.com”.
Respondent lacks rights or legitimate interests in the <averyksinger.com> domain name. Respondent is neither commonly known by the disputed domain name nor affiliated with Complainant. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with infringing images of Complainant’s original artworks.
Respondent registered and uses the <averyksinger.com> domain name in bad faith as Respondent utilizes a privacy shield and has failed to respond to emails addressed to Respondent.
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 and evidence 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 and supported 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 common law trademark rights in the AVERY K. SINGER mark because the mark was first used in commerce not later than 2010 in connection with visual art services, namely the creation and exhibition of paintings and other works of fine art by Complainant. Additionally, the AVERY K. SINGER mark was used in the URL of Complainant’s own website <averyksinger.com> from 2012 to 2019. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“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.”) Additionally, secondary meaning can be evidenced by longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”) In support of its claim of common law trademark rights, Complainant submits examples of public recognition of its AVERY K. SINGER mark. These include exhibitions of Complainant’s artwork, publication of its artwork images in catalogs, and various press and awards garnered by Complainant. Respondent has not filed a Response or made any other submission in this case and so it does not contest this evidence or Complainant’s assertions. Therefore, the Panel finds that Complainant has demonstrated common law rights in the AVERY K. SINGER mark sufficient to satisfy the threshold standing requirement of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <averyksinger.com> is identical or confusingly similar to Complainant’s AVERY K. SINGER mark as it incorporates Complainant’s mark in its entirety and merely adds the gTLD “.com”. The addition of a gTLD typically fails to sufficiently distinguish a disputed domain name from a mark per 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.”) In light of Respondent’s wholesale incorporation of Complainant’s mark and addition only of the “.com” gTLD, the Panel finds that the disputed domain name is confusingly similar to such mark per Policy ¶ 4(a)(i).
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 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 contends that Respondent lacks rights or legitimate interests in the <averyksinger.com> domain name as Respondent is neither commonly known by the disputed domain name nor affiliated with Complainant. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”) Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the 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 WHOIS information for the disputed domain name lists the registrant as “DOMAIN ADMINISTRATOR,” and Complainant argues there is no other evidence to suggest that Respondent is known by or authorized to use the AVERY K. SINGER mark. Based upon the available evidence, the Panel finds nothing to suggest that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <averyksinger.com> domain name in connection with a bona fide offering of goods or services or that it makes a legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with a website that involves many copyright violations and misrepresentations. Using a disputed domain name in connection with copyright violations may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Michael Green, FA 1592259 (Forum Jan. 12, 2015) (“the domain name resolves to a website which essentially copies text, format and other features of general getup from Complainant’s official website”). Here, Complainant submits screenshots of Respondent’s website and asserts that Respondent uses the disputed domain name in connection with infringing images of original artworks created by Complainant and infringing photographs of Complainant, and a biography of Complainant. Further, Complainant points out that certain pages of Respondent’s website, i.e., the “Terms” and “Contact” sections, make no mention of Respondent and thus the site is seeking to cause confusion and pass itself off as originating from Complainant. As Complainant has made out a prima facie case which has gone unrebutted by Respondent, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has not expressly made arguments under Policy ¶ 4(b), however, such arguments are not required under the Policy so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”).
Complainant contends that Respondent registered and uses the <averyksinger.com> domain name in bad faith as Respondent uses a privacy shield to hide its identity. Using a privacy shield can support a finding of bad faith per Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”)
Further, Complainant argues that Respondent failed to reply to multiple demand letters and that this silence also demonstrates Respondent’s bad faith in this matter. Guccio Gucci S.p.A. v. Smith Davilv, D2012-0052 (WIPO Mar. 6, 2012) (“the following also support a finding of bad faith: - failure to respond to the cease and desist email…). Complainant asserts that “Respondent did not reply, but instead changed the Registrant of the disputed domain name to a different entity, privacyguardian.org in order to shield the true identity of Respondent.”
Most notable to this Panel, however, is the fact that Respondent’s website contains many copyrighted images of, and seeks to pass itself off as Complainant. The appearance of copyrighted material can indicate bad faith registration and use of a disputed domain name. Cengage Learning, Inc. v Tran Dinh Dong, FA 1923509 (Forum Dec. 29, 2020) (“The activity is also copyright infringement which also demonstrates bad faith.”); Golden Goose S.p.A. v. 邹亮亮 (Zou Liang Liang), D2020-2529 (WIPO Dec. 23, 2020) (bad faith found where “Respondent used the Complainant’s registered trademarks and copyrighted photos without authorization”). Complainant has submitted screenshots of Respondent’s website and asserted, without rebuttal, that much of the text and images on the site infringing upon copyrights owned by Complainant.
Based upon a totality of the circumstances and evidence presented in this case, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <averyksinger.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 5, 2021
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