Brian Renner v. Contactprivacy.com
Claim Number: FA1007001335211
Complainant is Brian
Renner (“Complainant”), represented by Christopher
J. Falkowski, of Falkowski PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names listed in the Complaint are <movieinsider.org> and <movieinsider.com>, registered with Tucows, Inc.
As discussed below, the Panel finds that the only relevant domain name for this case is <movieinsider.org>.
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 July 14, 2010.
On July 16, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <movieinsider.org> and <movieinsider.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 July 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@movieinsider.org and postmaster@movieinsider.com. Also on July 22, 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 August 18, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant uses its THEMOVIEINSIDER trademark to provide online entertainment services relating to movies, including reviews, news, trailers, photographs, posters, videos, and other movie-related information.
Complainant has used THEMOVIEINSIDER mark continuously since July 2, 1999.
Complainant registered the <themovieinsider.com> domain name, which it uses in connection with its mark, on September 10, 2000.
Complainant has acquired common law rights to the THEMOVIEINSIDER trademark by virtue of its extensive use in commerce and resultant widespread recognition of the mark in the marketplace.
Respondent, Contactprivacy.com, registered the <movieinsider.org> domain name on August 11, 2005.
The disputed domain name does not resolve to an active website.
Respondent’s <movieinsider.org> domain name is confusingly similar to Complainant’s THEMOVIEINSIDER mark.
Respondent does not have any rights to or legitimate interests in the <movieinsider.org> domain name.
Respondent registered and used the <movieinsider.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
However, Complainant has failed to establish by proof a link between the identities of W. D. G. Ltd. and Contactprivacy.com. Furthermore, the WHOIS information does not indicate that the two parties are related. The parties do not have the same mailing address nor do they share an e-mail address or any other identifying information. Accordingly, under the National Arbitration Forum’s Supplemental Rule 4(f)(ii), the Panel is required to deny and dismiss the Complaint in relation to one of the disputed domain names.
Complainant does not hold a trademark registration for the
THEMOVIEINSIDER mark. However, trademark
registration is not necessary to establish rights in a mark under Policy ¶ 4(a)(i), so long as 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 a complainant's trademark be registered by a
government authority for such rights to exist); see
also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant asserts common law rights in its THEMOVIEINSIDER mark through its continuous use of the mark and the consequent development of secondary meaning in the mark. Respondent does not deny these assertions. Complainant’s submissions in this proceeding are minimally sufficient to establish its rights in its mark for purposes of the Policy. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that a complainant had common law rights in the McMULLEN COVE mark because that complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that a complainant established common law rights in the STELLAR CALL CENTRES mark because that complainant demonstrated that its mark had acquired secondary meaning). Accordingly, we conclude that Complainant has acquired common law rights in the trademark THEMOVIEINSIDER under Policy ¶ 4(a)(i) dating from September 10, 2000.
Respondent’s <movieinsider.org> domain name is confusingly similar to Complainant’s THEMOVIEINSDER mark. In forming the disputed domain name, Respondent merely deleted the article “the” from Complainant’s mark and attached the generic top-level domain (“gTLD”) “.org”. The omission of the definite article and the addition of the gTLD “.org” to Complainant’s THEMOVIEINSIDER mark do not render Respondent’s domain name distinct from the mark. Accordingly, they are confusingly similar. See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"); 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
Therefore, the Panel
finds that Respondent’s <movieinsider.org>
domain name is confusingly similar
to Complainant’s THEMOVIEINSDER mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case establishing that Respondent lacks rights to and legitimate interests in the <movieinsider.org> domain name. The burden then shifts to Respondent to demonstrate 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.
Prior panels have interpreted a respondent’s failure to
submit a response to a complaint filed under the Policy as evidence that a
respondent does not possess rights to or legitimate interests in a contested
domain name. See Am. Express Co. v. Fang 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.
Despite Respondent’s failure to
submit a Response in this proceeding, we will evaluate the record before us, in
light of the considerations set out in Policy ¶ 4(c), to determine whether 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 observing that the WHOIS information lists as the registrant of the <movieinsider.org> domain name only “Contactprivacy.com”, which does not resemble the disputed domain. On this spare record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
We also note that Complainant alleges, without objection
from Respondent, that Respondent’s domain name does not resolve to an active
website. Respondent’s lack of use of the
disputed domain name does not constitute a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial fair use of the domain under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a
respondent had no rights to or legitimate interests in a domain name under
either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any
active use of the domain name); see also
Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583
(Nat. Arb. Forum
Sept. 2, 2004):
Respondent
is wholly appropriating Complainant’s mark and is not using the … domain name
in connection with an active website.
The Panel finds that the [failure to make an active use] of a domain
name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii).
The Panel thus finds
that Complainant has established the required elements of Policy ¶ 4(a)(ii).
The totality of the circumstances may be considered when analyzing bad faith registration and use of a contested domain name under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances which, without limitation, constitute evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in ¶ 4(b) of the Policy are not an exhaustive list of bad faith evidence).
Prior panels have found that a respondent’s failure to make active use of a domain name can constitute bad faith use when the domain name registration occurred after a complainant acquired rights in a mark. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where a respondent failed to make active use of a disputed domain name and that respondent registered the domain name after a complainant registered its trademark with the USPTO).
We have already concluded that Respondent’s <movieinsider.org> domain name is confusingly similar to Complainant’s THEMOVIEINSIDER mark and that the domain name fails to resolve to an active website. We have likewise concluded from the unchallenged record that Complainant’s rights in its mark predate Respondent’s registration of the disputed domain name by approximately five years.
Therefore, the Panel finds that Respondent’s passive holding of the <movieinsider.org> domain name constitutes bad faith registration and use of the domain under Policy ¶ 4(a)(iii).
There being insufficient evidence in the record to permit a conclusion that Respondent registered both domain names, the Panel concludes that the relief requested shall be DENIED WITHOUT PREJUDICE in regard to the <movieinsider.com> domain name.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested shall be GRANTED in regard to the domain name <movieinsider.org>.
Accordingly, it is Ordered that the domain name <movieinsider.org> be forthwith TRANSFERRED from Respondent to Complainant, and that the allegations and petition of the Complaint are denied and dismissed without prejudice as to the domain name <movieinsider.com>.
Terry F. Peppard, Panelist
Dated: August 26, 2010
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