HandHeld Entertainment and Kieran O'Neil v. WhoisGuard a/k/a WhoisGuard Protected
Claim Number: FA0706001008008
Complainants are HandHeld Entertainment and Kieran
O'Neil (collectively, “Complainant”),
represented by John Berryhill,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <holylemon.com>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 13, 2007.
On
On June 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 9, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@holylemon.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <holylemon.com> domain name is identical to Complainant’s HOLYLEMON mark.
2. Respondent does not have any rights or legitimate interests in the <holylemon.com> domain name.
3. Respondent registered and used the <holylemon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kieran O’Neill, began operating a website at the <holylemon.com> domain name in 2003, where it provides video, photograph, flash animation, and other multimedia content products and services. Several notable publications have highlighted Complainant’s website, including Computer Weekly, BBC News, and MSN Money Central, many of which compare the website to the popular website YouTube.
HandHeld Entertainment recently acquired Mr. O’Neill’s website, domain name, and the goodwill associated with the HOLYLEMON mark. The website is now a wholly owned subsidiary of HandHeld Entertainment. The Panel will hereinafter refer to HandHeld Entertainment and Mr. O’Neill collectively as “Complainant.”
At some point after entering into its asset purchase agreement with HandHeld Entertainment, Mr. O’Neill encountered difficulties logging into his e-mail account and soon thereafter discovered the he could no longer access the <holylemon.com> domain name, and that the domain name was somehow also transferred to another registrar. Mr. O’Neill believes this was the result of using public Wi-Fi Internet access while traveling to meet with HandHeld Entertainment.
Respondent registered the <holylemon.com> domain name at some point between March and May 2007. The disputed domain name still resolves to Complainant’s website but Complainant has no control over the content and did not authorize the transfer of the disputed domain name to Respondent and another registrar.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Even though Complainant has not registered the HOLYLEMON
mark with a governmental agency, it has been well established that such a
registration is unnecessary to establish rights in the mark pursuant to Policy
¶ 4(a)(i). The Panel finds that
registration of the HOLYLEMON mark with a governmental agency is not necessary
to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that
the Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist); see also
Complainant attempts to establish rights in the HOLYLEMON mark through a claim of continuous and extensive use of the mark for over four years. Complainant sets forth news articles in defense of its claim of rights in the HOLYLEMON mark. In addition, Complainant provides evidence indicating that it has consistently and prominently used the HOLYLEMON mark in the headline of the website at the <holylemon.com> domain name as a mark, and not merely as a domain name. In light of this evidence, the Panel finds that Complainant has sufficiently demonstrated that the HOLYLEMON mark has acquired secondary meaning and, therefore, Complainant has common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Respondent’s <holylemon.com>
domain name is identical to Complainant’s HOLYLEMON mark, but for the addition
of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is
not a distinguishing difference and indicates that the domain name is identical
to the mark in accordance with Policy ¶ 4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO
June 25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar); see also
The Panel finds that Policy ¶ 4(a)(i) has been established.
In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests). The Panel finds that this Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy.
As indicated above, Respondent has hijacked the disputed domain name and has subsequently attempted to pass itself off as Complainant by resolving the disputed domain name to Complainant’s own website. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
No evidence exists on this record to indicate that
Respondent is commonly known by the disputed domain name. Further, an examination of Respondent’s WHOIS
information reveals the current registrant of the <holylemon.com> domain name is “WhoisGuard and WhoisGuard
Protected.” In lieu of countervailing
evidence, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent has hijacked the <holylemon.com> domain name from Complainant and is using it
to operate a website virtually identical to the website Complainant previously
operated at the domain name in dispute, the Panel finds that Respondent has
registered and is using the disputed domain name for the primary purpose of
disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Lambros v.
Brown, FA 198963 (Nat. Arb. Forum Nov. 19,
2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”); see
also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
In addition, Respondent has registered and is using the <holylemon.com> domain name in
bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is attempting to
attract, for commercial gain, Internet users to a website mimicking Complainant’s
former website at the <holylemon.com>
domain name. Respondent is taking advantage of consumer confusion as to the source,
affiliation, sponsorship or endorsement of the disputed domain name and
profiting from the goodwill associated with the HOLYLEMON mark. Therefore, Respondent’s use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Mezenin
v. Baselmans, FA
664060 (Nat. Arb. Forum May 8, 2006) (proceeding with a case involving
hijacking and finding that the respondent’s conduct provided evidence of bad
faith registration and use under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv)); see also 8X Entm’t, Inc. v. EXC Int’l AG, D2005-1126 (WIPO Dec. 28, 2005) (transferring the
<8x.com> domain name back to the complainant because the respondent had
hijacked the domain name and continued to redirect Internet users to the
complainant’s website).
Respondent has attempted to pass itself off as Complainant
by hijacking the disputed domain name and resolving the disputed domain name to
Complainant’s website. The Panel finds
that such use evinces registration and use in bad faith pursuant to Policy ¶
4(a)(iii). See Vivendi Universal Games v.
Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that
where the complainant’s mark was
appropriated at registration, and a copy of the complainant’s website was used
at the domain name in order to facilitate the interception of the complainant’s
customer’s account information, the respondent’s behavior evidenced bad faith
use and registration of the domain name); see
also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <holylemon.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 24, 2007
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