Blu Media Inc. v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA1002001307892
Complainant is Blu Media Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <justsuboys.com>, registered with Above, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 18, 2010.
On February 15, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <justsuboys.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 February 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 2010 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@justsuboys.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <justsuboys.com> domain name is confusingly similar to Complainant’s JUSTUSBOYS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <justsuboys.com> domain name.
3. Respondent registered and used the <justsuboys.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blu Media, Inc., uses its JUSTUSBOYS.COM domain name as a for-profit adult website containing reviews of adult websites as well as guides to help customers make purchasing decisions. Complainant purchased the JUSTUSBOYS.COM domain name on January 1, 2010 since used the mark continuously and has extensively promoted its website, e-magazine and print magazine under the JUSTUSBOYS.COM name. Complainant further submits that its mark has been widely publicized, written about, and blogged about since its initial launch on June 20, 2002.
Respondent registered the <justsuboys.com> domain name on October 8, 2009. Respondent’s disputed domain name resolves to a website that displays third-party links to sponsored websites for adult-oriented material, some of which are in competition with Complainant. In response to these proceedings Respondent originally offered to sell the disputed domain name to Complainant for $5,000 and subsequently lowered the price to $550.
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 own a registered trademark for its
JUSTUSBOYS.COM mark. Governmental
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels
have decided that a federal trademark registration is not required if the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark.
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 Zee TV
USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding
that the complainant need not own a valid trademark registration for the ZEE
CINEMA mark in order to demonstrate its rights in the mark under Policy ¶
4(a)(i)).
Complainant contends that since its original registration,
the JUSTUSBOYS.COM domain name has been used continuously as well as marketed
extensively thereby creating a secondary meaning under definition of Policy ¶
4(a)(i). In
support of its contention Complainant has submitted evidence of awards received
for its e-magazine as well as critic reviews of its website and magazine. Complainant further provides evidence of high
“Alexa” rankings for the number of visitors to its website. The Panel finds that Complainant has produced
sufficient evidence to show it has common law rights in the JUSTUSBOYS.COM mark
for purposes of Policy ¶ 4(a)(i) through continuous
and extensive commercial use before Respondent registered the disputed domain
name. 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
(concluding that the complainant had established common law rights in the
ARTISTIC PURSUIT mark by using the mark in commerce before Respondent
registered the disputed domain name); 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).
Complainant contends that the <justsuboys.com> domain name is confusingly similar to its JUSTUSBOYS.COM mark. Complainant notes that the transposition of the letters “u,” and “s” do not render the disputed domain name distinct from its mark. Complainant also notes that confusion is more likely for Internet users attempting to reach its <justusboys.com> official domain because of the similar content displayed on both websites. The Panel finds that the disputed domain name misspells Complainant’s mark by transposing two of its letters is not distinguished from the mark for purposes of Policy ¶ 4(a)(i) analysis. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). Therefore, the Panel finds that the <justsuboys.com> domain name is confusingly similar to Complainant’s JUSTUSBOYS.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant submits arguments that Respondent does not have rights or legitimate interests in the <justsuboys.com> domain name. Complainant must develop a prima facie case to show that Respondent does not have rights or legitimate interests in the disputed domain name. Upon producing a prima facie case the burden of proof shifts to Respondent to submit evidence that it does hold rights and legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant argues that Respondent is not commonly known by the <justsuboys.com> domain name, nor has Complainant granted Respondent permission to use its mark. The WHOIS information does not indicate and Respondent has not offered any evidence showing that it is commonly known by the <justsuboys.com> domain name. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant further argues that Respondent’s use of the
disputed domain name does not amount to an offering of goods or services. Respondent’s the <justsuboys.com> domain name resolves to a website
featuring third-party links to adult-oriented websites in competition with
Complainant. Complainant argues that
Respondent is relying on the typographical mistake of Internet users to divert
the users to its website where it, presumably, receives click-through fees for
the third-party links displayed. The
Panel finds that Respondent’s reliance on typosquatting to create a confusingly
similar disputed domain name, where it receives referral fees to websites in
competition with Complainant is not a use in connection with a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name
in connection with a bona fide offering of goods and services because
Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Nat’l
Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting … as a means of redirecting consumers against their
will to another site, does not qualify as a bona fide offering of goods or
services, whatever may be the goods or services offered at that site.”); see also Microsoft Corp. v. Domain
Registration
Complainant offers further evidence that Respondent lacks rights and legitimate interests in the disputed domain name because of its attempts to sell the disputed domain name, both publicly and to Complainant. Complainant contends that Respondent has the <justsuboys.com> domain name for sale on the website <sedo.com>, as well as offering to sell the disputed domain to Complainant, initially for $5000 and subsequently for $550. The Panel finds that Respondent’s willingness to sell the disputed domain name for an amount above its costs in obtaining the domain name is further evidence of its lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s website by using common misspellings of the
Complainant’s JUSTUSBOYS.COM mark. The
Panel finds that Respondent’s engagement in what is commonly referred to as
typosquatting is evidence that Respondent lacks any rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s listing of the disputed
domain name for sale on the website <sedo.com> as well as Respondent’s
offers to sell the disputed domain to Complainant for $5,000 and $550 are
evidence of bad faith registration and use.
The Panel finds that Respondent’s general listing of the disputed domain
name for sale, as well as its attempts to sell the disputed domain name to
Complainant for amounts in excess of its initial costs are evidence of bad
faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's general offer of the disputed domain name registration
for sale establishes that the domain name was registered in bad faith under
Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Complainant also argues
that Respondent’s use of its confusingly similar domain name to redirect
Internet users to its website displaying links to Complainant’s competitors
creates a disruption in its business.
The Panel finds that Complainant’s evidence is sufficient to establish
Respondent’s intentional disruption of Complainant’s business as bad faith
registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a confusingly similar domain name to attract Internet users to a
directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also
Complainant further argues that Respondent’s use of the <justsuboys.com> domain name to
display links to competitors of Complainant, presumably for financial gain, is
evidence of bad faith registration and use.
The Panel finds that where Respondent’s resolved website displays
sponsored listings of third-party links that are in competition with
Complainant, at a confusingly similar domain name to Complainant’s mark,
presumably for financial gain, that this use constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See
The Panel has already determined that Respondent has engaged
in typosquatting. This practice has been
found to constitute evidence by itself of bad faith registration and use under
Policy ¶ 4(a)(iii).
See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the
respondent’s registration and use of the <nextell.com> domain name was in
bad faith because the domain name epitomized typosquatting in its purest form);
see also Microsoft Corp. v.
Domain Registration
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 <justsuboys.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 30, 2010
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