national arbitration forum

 

DECISION

 

Clickspark, LLC v. Peter Nguyen c/o Peter H Nguyen

Claim Number: FA0909001285567

 

PARTIES

Complainant is Clickspark, LLC (“Complainant”), represented by David C. Rimas, New York, USA.  Respondent is Peter Nguyen c/o Peter H Nguyen (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cybertube.com>, registered with Moniker.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2009.

 

On September 22, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <cybertube.com> domain name is registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker 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 September 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 2009 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@cybertube.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cybertube.com> domain name is identical to Complainant’s CYBERTUBE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cybertube.com> domain name.

 

3.      Respondent registered and used the <cybertube.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant operates a website that offers members the use of downloadable computer software for viewing online video content.  Complainant promotes its software under the CYBERTUBE mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on June 30, 2009 (Reg. No. 3,646,432), with first use in commerce in 2007.  Complainant has used the CYBERTUBE mark continuously in commerce since at least as early as June 7, 2007, when Complainant registered the <cybertube.tv> domain name which utilizes the CYBERTUBE mark in its entirety; Complainant has invested substantial amounts of money in developing and promoting its services offered on that website. 

 

Respondent registered the <cybertube.com> domain name on June 11, 2008.  The disputed domain name redirects Internet users to another website that contains adult-oriented content.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Respondent registered the <cybertube.com> domain name on June 11, 2008

The Panel finds that Complainant has established rights in the CYBERTUBE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 3,646,432 issued June 30, 2009).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

The Panel also finds that pursuant to Policy ¶ 4(a)(i), Complainant has established common law rights in the CYBERTUBE mark through its use of the CYBERTUBE mark in commerce since at least as early as 2007, as evidenced by Complainant’s USPTO registration and its registration of the <cybertube.tv> domain name, which it uses to promote its services.  See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark);

Complainant contends that Respondent’s <cybertube.com> domain name is identical to its CYBERTUBE mark.  The <cybertube.com> domain name only differs from Complainant’s mark in that the generic top-level domain (“gTLD”) “.com” has been added.  The Panel finds that the addition of a gTLD does not reduce the likelihood of confusion between the domain name and the mark, because every domain name must contain a top-level domain.  Therefore, because the single change made to the disputed domain name neither minimizes nor eliminates the likelihood of confusion between Complainant’s mark and the disputed domain name, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <cybertube.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <cybertube.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the CYBERTUBE mark, and the WHOIS information identifies Respondent as “Peter Nguyen c/o Peter H Nguyen.”  Thus, the Panel finds that Respondent has not established rights or legitimate interests in the <cybertube.com> domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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 of that it is commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent is using the <cybertube.com> domain name to operate a website featuring adult-oriented images and content for Respondent’s commercial advantage.  The Panel finds that Respondent’s use of a domain name that is confusingly similar to the CYBERTUBE mark to redirect Internet users interested in Complainant’s products to a website with adult-oriented content is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

 

Respondent is using the confusingly similar <cybertube.com> domain name, registered June 11, 2008, to redirect Internet users to a website featuring adult-oriented images and content for Respondent’s commercial gain.  Therefore, the Panel finds that Respondent’s use of the <cybertube.com> domain name for commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to adult-oriented websites).

 

The Panel also finds that the use of the disputed domain name to expose unsuspecting Internet users to adult-oriented content is also evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to an [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cybertube.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: November 19, 2009

 

 

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