Cybertania, Inc v.
Claim Number: FA1004001317339
Complainant is Cybertania,
Inc (“Complainant”), represented by Leo
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <my-free-cams.net>, registered with GoDaddy.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2010.
On April 6, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <my-free-cams.net> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 April 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2010 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@my-free-cams.net. Also on April 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant is the owner of the registered MYFREECAMS.COM service mark, on file with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,495,750, issued September 2, 2008).
Complainant has used the MYFREECAMS.COM mark in connection with the operation of an online adult entertainment services website since 2002.
Respondent registered the <my-free-cams.net> domain name on March 16, 2010.
Respondent’s <my-free-cams.net> domain name is confusingly similar to Complainant’s MYFREECAMS.COM mark.
The disputed domain name resolves to a website which markets services in competition with the business of Complainant.
The disputed domain name redirects Internet users to Respondent’s website, which closely resembles Complainant’s official website and includes Complainant’s logo and a copyright notice including the dominant feature of Complainant’s mark.
Internet users searching for Complainant’s business and services may become confused as to the possibility of Complainant’s sponsorship of or affiliation with Respondent’s <my-free-cams.net> domain name and resolving website.
Respondent is not commonly known by the disputed domain name.
No license or other authorization has been given by Complainant to Respondent to use the MYFREECAMS.COM mark.
Respondent does not have any rights to or legitimate interests in the <my-free-cams.net> domain name.
Respondent registered and uses the <my-free-cams.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical with a or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its MYFREECAMS.COM service mark
with the USPTO is sufficient to establish its rights in the mark pursuant to
Policy ¶ 4(a)(i). See Morgan
Complainant asserts that Respondent’s <my-free-cams.net> domain name is confusingly similar to Complainant’s MYFREECAMS.COM service mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, merely adding hyphens and replacing the generic top level domain “.com” with the gTLD “.net.” These minor alterations to Complainant’s registered mark do not distinguish the domain name from the competing mark. As a result Respondent’s domain name is substantively identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark to form a contested domain name did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003):
The
addition of a hyphen to Complainant's mark does not create a distinct
characteristic capable of overcoming a Policy ¶ 4(a)(i)
confusingly similar analysis.
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis). Further see, on the same point, 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 to a competing mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights to or legitimate interests in the <my-free-cams.net> domain name. Once Complainant has made out a prima facie case in support of this contention, the burden shifts to Respondent to establish that it has rights to or legitimate interests in the disputed domain name. 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.
Complainant has established a prima facie case under this head of the Policy, thus shifting the burden to Respondent. Respondent, for its part, has failed to respond to the Complaint filed in this proceeding. We are therefore free to conclude that Respondent is without rights to or legitimate interests in the contested domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Further, Complainant asserts, without objection from Respondent, that no license or other authorization has been given to Respondent to use the MYFREECAMS.COM mark. Moreover, the WHOIS information for the disputed domain name lists the registrant only as “Stanley Lin”, which does not resemble the <my-free-cams.net> domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly know by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com> where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that Complainant asserts that Respondent’s <my-free-cams.net> domain name redirects Internet users to Respondent’s website, which operates in competition with the business of Complainant. Respondent does not deny this assertion. We may safely presume, from the circumstances here presented, that Respondent receives commercial benefit, in the form of click-through or similar fees, for each visit to the resolving website by redirected Internet users. Respondent’s use of the <my-free-cams.net> domain name in the manner alleged, and in the attending circumstances, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s mark in forming a domain name which it uses to redirect Internet users to that respondent’s website, for commercial gain, does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent used a domain name that was neither within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used the contested domain name to take advantage of a complainant's mark by employing it to divert Internet users to a competing commercial website).
Finally under this head of the Complaint, Complainant contends that Respondent’s <my-free-cams.net> domain name redirects Internet users to Respondent’s website and includes Complainant’s logo and a copyright notice including the dominant feature of Complainant’s mark. Respondent does not object to this allegation. Respondent’s attempt thus to pass itself off as Complainant by imitating Complainant’s official website does not reflect that Respondent has any rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding that a respondent’s attempt to pass itself off as a complainant by implementing a color scheme identical to that of a complainant’s was evidence that that respondent lacked rights to or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a complainant online, via an unauthorized use of that complainant’s mark, was evidence that that respondent had no rights to or legitimate interests in a disputed domain name).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant asserts that Respondent’s <my-free-cams.net> domain name redirects Internet users to Respondent’s website, which offers products that compete with Complainant’s business conducted under its MYFREECAMS.COM mark. Respondent’s registration and use of the disputed domain name to divert Internet users to a website in competition with the business of Complainant constitutes a disruption of Complainant’s business, and thus demonstrates bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent
is appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
See also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where a respondent’s websites pass users through to that respondent’s competing online business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between a complainant and a respondent, that respondent likely registered a contested domain name with the intent to create user confusion and disrupt that complainant's business).
In addition, Complainant asserts that Internet users searching online for Complainant’s business and services may become confused as to Complainant’s sponsorship or affiliation with Respondent’s <my-free-cams.net> domain name and resolving website. It is undisputed that the contested domain name resolves to a web site that includes Complainant’s mark, and of the commercial logo related to that mark, as well as a copyright notice including the dominant feature of Complainant’s mark. We must therefore conclude that Internet users may become confused as to the possibility of Complainant’s sponsorship of or affiliation with the disputed domain name and resolving website. Moreover, it is likely that Respondent profits from this confusion by attracting Internet users seeking Complainant’s services to Respondent’s website and receiving click-through fees or advertising fees. Therefore, Respondent’s use of the <my-free-cams.net> domain name in the manner alleged in the Complaint constitutes bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching online for a complainant to its own website, likely profiting in the process); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002):
Respondent
is using the domain name at issue to resolve to a website at which
Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the
Policy.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <my-free-cams.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 12, 2010
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