Kitty C. Williams v. WhoisGuard Protected c/o Whois Guard
Claim Number: FA0707001043246
Complainant is Kitty C. Williams (“Complainant”), represented by David
L. Silverman, 900 SW 5th Avenue, Suite 2600,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <animewallpapers.com> and <getanimewallpapers.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 23, 2007.
On July 23, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <animewallpapers.com> and <getanimewallpapers.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 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@animewallpapers.com and postmaster@getanimewallpapers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <animewallpapers.com> domain name is identical to Complainant’s ANIMEWALLPAPERS.COM mark. Respondent’s <getanimewallpapers.com> domain name is confusingly similar to Complainant’s ANIMEWALLPAPERS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <animewallpapers.com> and <getanimewallpapers.com> domain names.
3. Respondent registered and used the <animewallpapers.com> and <getanimewallpapers.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The <animewallpapers.com> domain name was previously
owned by an individual named Philip Cheung-Leun Mak (“Mak”), who registered
this disputed domain name under his fictitious business name “AAAnime Net” on
May 25, 2000. Mak used this domain name
to offer computer desktop wallpapers consisting of Japanese anime characters or
scenes. Mak held the <animewallpapers.com>
domain name registration until his death on February 13, 2007.
Complainant,
Kitty C. Williams, is the lawful
administrator of Mak’s estate.
Complainant submitted as probate documents from the Supreme Court of
British Columbia evidencing appointment of Complainant as Administratrix to
Mak’s estate.
Upon Mak’s death, a third-party gained access to Mak’s e-mail
account and sent an e-mail correspondence to the Registrar requesting transfer
of the <animewallpapers.com> domain name registration to this third-party. This disputed domain name registration was
subsequently transferred to the third-party.
Complainant
initiated e-mail correspondence with the third-party, and the third-party
claimed to be a technical administrator for some of Mak’s servers. However, the third-party never received
Complainant’s authorization to transfer the <animewallpapers.com>
domain name registration.
On June 12, 2007, Respondent registered the <getanimewallpapers.com> domain name. This disputed domain name currently resolves to a website that contains all the content that was previously posted to the website that resolved from the <animewallpapers.com> domain name. Furthermore, the <animewallpapers.com> domain name now redirects Internet users to the website that resolves from the <getanimewallpapers.com> domain name.
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.
Complainant does not hold a registered trademark for the
ANIMEWALLPAPERS.COM mark. However, the
Panel notes previous UDRP decisions which have indicated that a registered
trademark is not required for a complainant to establish rights in a mark. See
Complainant, as the lawful administrator of Mak’s estate,
alleges common law rights to the ANIMEWALLPAPERS.COM mark through Mak’s
continued use of the <animewallpapers.com> domain name for seven
years. Complainant alleges that the
popularity of the website that resolved from this disputed domain name allowed
Mak to generate substantial revenues from advertisements featured on the site,
and Complainant submitted ledgers, receipts, and other documentation to this
effect as Exhibit C to the Complaint.
Based upon this evidence, the Panel finds that Complainant has
sufficiently established common law rights to the ANIMEWALLPAPERS.COM mark
pursuant to Policy ¶ 4(a)(i). See
The <animewallpapers.com> domain name contains
Complainant’s ANIMEWALLPAPERS.COM mark in its entirety without any
changes. Therefore, the Panel concludes
that Respondent’s <animewallpapers.com> domain name is identical
to Complainant’s ANIMEWALLPAPERS.COM mark pursuant to Policy ¶ 4(a)(i). See
Respondent’s <getanimewallpapers.com> domain name is very similar because it also contains Complainant’s ANIMEWALLPAPERS.COM mark in its entirety. This disputed domain name adds the generic word “get” at the beginning, which does not sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that Respondent’s <getanimewallpapers.com> domain name is confusingly similar to Complainant’s ANIMEWALLPAPERS.COM mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <animewallpapers.com> and <getanimewallpapers.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <animewallpapers.com> and <getanimewallpapers.com> domain names. The WHOIS information identifies Respondent as “WhoisGuard Protected c/o Whois Guard.” The Panel cannot find any conclusive evidence in the record indicating that Respondent was authorized to use the <animewallpapers.com> domain name while Mak was alive or after he passed away. The Panel also cannot find any other evidence in the record indicating that Respondent was ever commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <animewallpapers.com> and <getanimewallpapers.com> domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent has transferred the content posted to the website that resolved from the <animewallpapers.com> domain name to the website that resolves from Respondent’s <getanimewallpapers.com> domain name that Respondent registered on June 12, 2007. Respondent is also diverting users seeking the <animewallpapers.com> domain name to the website that resolves from Respondent’s <getanimewallpapers.com> domain name. Respondent is attempting to profit from the goodwill associated with Complainant’s ANIMEWALLPAPERS.COM mark by diverting customers to Respondent’s website for Respondent’s benefit. The Panel finds that such use of the disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's 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).”); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
Complainant, as the lawful administrator of Mak’s estate,
previously held the registration to the <animewallpapers.com> domain name. Upon Mak’s death, Respondent
opportunistically, and without authorization, transferred registration of this
disputed domain name to Respondent. The
Panel finds this to be additional evidence that Respondent lacks rights and
legitimate interests in the <animewallpapers.com> domain name
pursuant to Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance
v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003)
(“Complainant’s prior registration of the domain name, coupled with
Respondent’s failure to respond to this dispute, is evidence that Respondent
has no rights or legitimate interests in the domain name pursuant to Policy
4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Servs., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the
same domain name is a factor in considering the respondent’s rights or
legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent transferred all content from the <animewallpapers.com> domain name, which Mak developed and maintained, to the website that resolves from Respondent’s recently registered <getanimewallpapers.com> domain name. Respondent is now redirecting all users seeking the <animewallpapers.com> domain name to Respondent’s own website. Respondent is using the disputed domain names to attract, for commercial gain, Internet users seeking Complainant’s website. The Panel therefore concludes that Respondent’s registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent opportunistically registered the <animewallpapers.com> domain name, without authorization, after Mak passed away. The Panel finds that this manner of registration and subsequent use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also Red Nacional De Los Ferrocarriles Espanoles v. Ox90, D2001-0981 (WIPO Nov. 21, 2001) (“The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.”).
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 <animewallpapers.com> and <getanimewallpapers.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 11, 2007
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