Ms. Amber Ruffin and Universal Television LLC v. jp curtis
Claim Number: FA2109001966621
Complainant is Ms. Amber Ruffin and Universal Television LLC (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is jp curtis (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amberruffin.com>, <amberruffinshow.com>, and <theamberruffinshow.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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2021; the Forum received payment on September 28, 2021.
On September 29, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amberruffin.com>, <amberruffinshow.com>, and <theamberruffinshow.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 September 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 20, 2021 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@amberruffin.com, postmaster@amberruffinshow.com, postmaster@theamberruffinshow.com. Also on September 30, 2021, 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 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Two parties, Amber Ruffin and Universal Television LLC, filed this administrative proceeding as Complainants. The rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as the “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In this case, Amber Ruffin is a performing artist who has been engaged by Universal Television LLC for performances on its television network. She has consented to an application filed with the United States Patent and Trademark Office (USPTO) by Universal Television LLC for registration of the THE AMBER RUFFIN SHOW mark (written consent signed by Amber Ruffin submitted as Complaint Exhibit E-2). Further, both Complainants are represented in this proceeding by the same firm and seek the same remedy, which is that the Domain Names be transferred to both Complainants. These factors demonstrate sufficient nexus to permit this proceeding to be prosecuted by both named Complainants. Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., Case No. D2009-1243 (WIPO Nov. 6, 2009) (Consolidation upheld where “Complainants are represented by a single authorized representative; each Complainant seeks the same remedy with respect to each disputed domain name; and the Complaint involves a single Respondent….”). Given the close legal relationship between the two Complainants, consolidation of both into this single Complaint is appropriate and efficient and will create no prejudice for the Respondent. The Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to both named Complainants.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES
The Complaint relates to three Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant does not address this issue but the evidence before the Panel establishes that all three Domain Names are effectively controlled by the same person or entity. All three of them were registered with the same registrar, they were created within three days of each other and were updated within eight days of each other (WHOIS report submitted as Complaint Exhibits 2a, 2b,and 2c.). The WHOIS information furnished to Forum by the registrar lists the same person, jp curtis, as the registrant of all three Domain Names. Finally, all three Domain Names redirect to the same web site. On these facts the Panel finds that all three Domain Names are registered to the same person or entity or are under common control. The Panel will proceed as to all of them.
A. Complainant
Complainant Amber Ruffin is a comedian, author, TV host, and celebrity whom Complainant Universal Television LLC has engaged to host a late-night talk show on its Peacock television network. Complainant has common law rights in the AMBER RUFFIN, AMBER RUFFIN SHOW and THE AMBER RUFFIN SHOW marks (the AMBER RUFFIN marks) based upon its use of those marks in commerce and on television for several years. Respondent’s <amberruffin.com>, <amberruffinshow.com>, and <theamberruffinshow.com> Domain Names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety, merely adding generic words along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, and Complainant has not authorized it to use its marks. Respondent does not use the Domain Names for any bona fide offerings of goods or services, or for any legitimate noncommercial or fair use, but instead redirects Internet traffic to a web site whose content is related to some of the material presented on Complainant’s TV show. It also offers the Domain Names for sale.
Respondent registered and uses the Domain Names in bad faith. Respondent registered the Domain Names (i) to sell them to the public at large but particularly to Complainant, (ii) as part of a pattern of bad faith conduct to prevent Complainant from using them, (iii) to disrupt the business of Complainant, and (iv) for commercial gain to attract Internet users to its web site by causing confusion as to the source, sponsorship, affiliation or endorsement of its web site by Complainant. Further, Respondent had actual knowledge of Complainant’s rights in the AMBER RUFFIN marks when it registered the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant submitted evidence of its application, filed September 21, 2021, to register its THE AMBER RUFFIN SHOW mark with the USPTO (copy of application submitted as Complaint Exhibit E-1). While the application date for a registered trademark establishes the priority date for that registration, the mere filing of an application for USPTO registration does not guarantee that a registration will ultimately issue and does not constitute competent evidence of rights in a mark. Complainant’s application for a USPTO registration of its the AMBER RUFFIN SHOW mark is not sufficient in and of itself to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i).
It is also well-settled, however, that a complainant need not show registration of its mark to establish rights in a mark in order to meet the requirements of Policy ¶ 4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complaint Exhibit D contains copies of print and online articles referring to and describing Amber Ruffin and The Amber Ruffin Show on television from as early as 2017. There are some 13 of these articles spanning the period from 2017 to the present and they unequivocally demonstrate Complainant’s use of the AMBER RUFFIN and THE AMBER RUFFIN SHOW marks in commerce, and public awareness of those marks as associated exclusively with Complainant. Finally, while Complaint’s trademark application with the USPTO is not sufficient in and of itself to confer rights in the mark, it is certainly additional evidence that Complainant is currently using the mark in its business operations and supports Complainant’s contentions of common law rights in the mark. On this evidence, the Panel finds that Complainant has common law rights in the AMBER RUFFIN marks sufficient to meet the requirements of Policy ¶ 4(a)(i).
Respondent’s <amberruffin.com>, <amberruffinshow.com>, and <theamberruffinshow.com> Domain Names are identical or confusingly similar to the AMBER RUFFIN marks. All of them incorporate some or all of the AMBER RUFFIN marks verbatim, merely adding the “.com” gTLD. This change is not sufficient to distinguish the Domain Names from Complainant’s marks for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the AMBER RUFFIN marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent has not been commonly known by the Domain Names, (ii) Complainant has not authorized Respondent to use its AMBER RUFFIN marks, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it offers them for sale and redirects Internet traffic to a web site whose content is related to some of the material presented on The Amber Ruffin Show. These allegations are addressed as follows:
The WHOIS information furnished to the Forum by the registrar lists “jp curtis” as the registrant of the Domain Names. This name bears no resemblance to any of the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), 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.”).
Complaint Exhibit F contains screenshots of the <americaracism.com> web site to which all three of the Domain Names redirect Internet traffic. This site contains photos and articles portraying or dealing with acts of violence against African Americans, which is related to the topic of racism frequently addressed in Ms. Ruffin’s comedic material as shown in Complaint Exhibit D. At the end of the web site is a solicitation for offers to purchase any of the domain names that point to this web site. There is nothing on the web site to suggest that the site is sponsored or endorsed by Complainant. The apparent sponsor is identified only as “RacismAmerica.com.” It appears from this that Respondent’s primary objective here is to attract offers to buy the Domain Names. This use is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). N.V. Nutricia v. Rob Monster, FA 1952511 (Forum Aug. 2, 2021) (“The <fortini.com> domain name resolves to a webpage that offers the domain name for sale or lease by inviting users to submit offers to Respondent. See Compl. Ex. 5. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the <fortini.com> domain name, under Policy Para. 4(a)(ii), also due to Respondent’s offer for sale.”), Blackstone TM L.L.C. v. Anonymize, Inc., FA 1952698 (Forum July 29, 2021) (where disputed domain resolved to a general for sale page, the Panel held that “[a]bsent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the ¶ 4(b)purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by registering Domain Names so closely associated with Complainant and its TV show, Respondent has prevented Complainant from reflecting its AMBER RUFFIN marks in domain names corresponding to Complainant’s TV show. The fact that Respondent registered three domain names having this effect at virtually the same time is sufficient to establish a pattern for the purposes of Policy ¶ 4(b)(ii). Rolls-Royce PLC v. Ragnar Kallaste, Case No. D2014-2218 (WIPO March 3,2015) (finding that the respondent’s registration of the two domain names involved in that case, plus a history of registering at least three other domain names which also incorporated the names of automobile manufacturers, constituted a pattern for the purposes of Policy ¶ 4(b)(ii)). The WIPO Overview 3.0 notes that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. A pattern of abuse has been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. WIPO Overview 3.0 at ¶ 3.1.2.
Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name. The evidence is not clear whether the Respondent here registered the Domain Names to accomplish that specific objective, but the fact that Respondent also offers the Domain Names, which are so closely and specifically associated with Complainant and its TV show, for sale strongly suggests that this was at least one of Respondent’s primary motives in registering the Domain Names. Respondent’s registration of these Domain Names would give it substantial leverage in any negotiations with Complainant for a transfer of the Names. Further, Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Respondent’s motivation is less significant than the effect of its actions. Its having registered the Domain Names, which incorporate Complainant’s marks verbatim, prevents Complainant from registering and using these names itself. Respondent clearly knew or should have known that its registration and continued use of the Domain Names would have this effect and that it was wrongful as against Complainant. This is manifest evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s solicitation of offers to buy the Domain Names fits within the circumstances set forth in Policy ¶ 4(b)(i) but offers no evidence as to the amount of money Respondent is asking. Policy ¶ 4(b)(i) specifically includes a requirement that the consideration asked be in excess of a respondent’s documented out-of-pocket costs directly related to the domain name. While, under the circumstances of this case as described above, it is likely that the Respondent would seek consideration in excess of the permitted amount, in the absence of any evidence bearing upon this factor the Panel is reluctant so to find.
As to Complainant’s argument that Respondent’s conduct falls within the circumstances articulated in Policy ¶ 4(b)(iii), there is no evidence that Respondent and Complainant are in any sense competitors, so that argument fails as well.
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in July and early August of 2020 (the WHOIS reports submitted as Complaint Exhibit 2 show creation dates). Complainant’s AMBER RUFFIN marks have been used since 2017 and are well known in the entertainment industry and among those who follow late-night talk shows on television (print and online articles describing the Amber Ruffin TV show submitted as Complaint Exhibit D). Respondent copied those marks verbatim into the Domain Names. It uses the marks as the dominant element of all three Domain Names and redirects Internet traffic to a web site whose content is related to some of the comedic material presented on Complainant’s TV show. Again, given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amberruffin.com>, <amberruffinshow.com>, and <theamberruffinshow.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: October 28, 2021
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