national arbitration forum

 

DECISION

 

TROPICAL MBC, LLC v. zachary angster / personal

Claim Number: FA1103001376172

 

PARTIES

Complainant is TROPICAL MBC, LLC (“Complainant”), represented by John J. O’Malley of Volpe and Koenig PC, Pennsylvania, USA.  Respondent is zachary angster / personal (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clips4sale.co>, registered with eNom, Inc.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2011; the National Arbitration Forum received payment on March 4, 2011.

 

On March 4, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <clips4sale.co> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2011 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@CLIPS4SALE.CO.  Also on March 9, 2011, 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 March 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

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 <clips4sale.co> domain name is identical to Complainant’s CLIPS4SALE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <clips4sale.co> domain name.

 

3.    Respondent registered and used the <clips4sale.co> domain name in bad faith.

 

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

 

FINDINGS

Complainant, TROPICAL MBC, LLC, owns a trademark registration for its CLIPS4SALE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,554,200 issued December 30, 2008).  Complainant uses its mark in connection with adult-oriented media and provides a website featuring musical performances, musical videos, related film clips, photographs and other multimedia materials. 

 

Respondent, zachary angster / personal, registered the <clips4sale.co> domain name on July 21, 2010.  The disputed domain name resolves to a website that offers services identical to those offered by Complainant.

 

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

 

Complainant asserts rights in its CLIPS4SALE mark based on its registration of the mark with the USPTO (Reg. No. 3,554,200 issued December 30, 2008).  Previous panels have held that a USPTO registration is sufficient evidence of a complainant’s rights in a mark and meets the requirements of Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).  This Panel finds accordingly. 

 

Complainant argues that Respondent’s <clips4sale.co> domain name is identical to Complainant’s CLIPS4SALE mark.  In Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002), the panel found that the respondent’s <europcar.ro> domain name was identical to the complainant’s EUROPCAR mark because the domain name incorporated the complainant’s mark in its entirety and only deviated by the addition of the Romanian country code “.ro.”  The panel in Europcar Int’l  went on to hold that because top-level domains are required of domain name registrants the addition of one has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).  In the case at hand, Respondent has merely added the country-code top-level domain (“ccTLD”) “.co” to the entirety of Complainant’s CLIPS4SALE mark.  Therefore, based on the findings of the panel in Europcar Int’l, this Panel finds that Respondent’s <clips4sale.co> domain name is identical to Complainant’s CLIPS4SALE mark pursuant to Policy ¶ 4(a)(i). 

 

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

 

Rights or Legitimate Interests

 

It is well established that once a complainant establishes a prima facie case in support of its allegations that the respondent lacks rights and legitimate interests, the burden of proof shifts to the respondent to submit evidence that it does possess rights 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.”).  Previous panels have held that where a respondent fails to submit a response, it can be presumed that the respondent lacks rights and legitimate interests in the disputed 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 the presumptions of past panels, the Panel in this case elects to review the evidence on record to make a determination as to whether Respondent has rights or legitimate interests in the disputed domain name. 

 

Complainant argues that Respondent was not commonly known by the disputed domain name prior to Respondent’s knowledge of Complainant’s rights in the CLIPS4SALE mark.  The WHOIS information for the <clips4sale.co> domain name lists the registrant as “zachary angster / personal.”  Previous panels have found that where the WHOIS information does not reflect that the respondent is commonly known by the disputed domain name, the respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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); 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).  This Panel finds that, as neither the WHOIS information nor any other information in the record indicates that Respondent is commonly known by the <clips4sale.co> domain name, Respondent lacks rights and legitimate interests in the name under Policy ¶ 4(c)(ii). 

 

Complainant provides evidence, in the form of screenshots of the disputed domain name’s resolving website, that Respondent is using the <clips4sale.co> domain name to offer services identical to those offered by Complainant, namely photos and video clips featuring adult-oriented content.  Presumably the content displayed on Respondent’s resolving website benefits Respondent financially in some way.  The Panel finds that Respondent’s use of a domain name identical to Complainant’s mark, to operate a directly competing business, is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). 

 

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

 

Registration and Use in Bad Faith

 

Previous panels have had the opportunity to examine cases where a respondent registered a disputed domain name and then used that domain name to resolve to a website which directly competed with the services offered by the complainant.  In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) and Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), panels held that where the respondents appropriated the mark of a complainant in the disputed domain name and then diverted Internet users to the respondent’s competing website, bad faith under Policy ¶ 4(b)(iii) was present.  In this situation, Respondent has registered a domain name which incorporates Complainant’s entire mark, rendering the disputed domain name identical to the CLIPS4SALE mark.  Respondent then uses the disputed domain name to operate a website that offers photographs and video clips featuring adult-oriented content, in direct competition with the services Complainant offers under its mark.  Therefore, the Panel agrees with prior panels who have found that this conduct amounts to bad faith pursuant to Policy ¶ 4(b)(iii). 

 

Complainant argues that Respondent, through its registration and use of the disputed domain name, clearly intended to capitalize on the goodwill associated with Complainant’s established CLIPS4SALE mark.  The Panel agrees and finds that as Respondent likely profits from the displayed adult-oriented video clips and photographs, there exists enough evidence to support a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

 

The Panel finds that Policy ¶ 4(a)(iii) is 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 <clips4sale.co> domain name be TRANSFERRED from Respondent to Complainant. 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  April 1, 2011

 

 

 

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