Tropical MBC, LLC v. xxxclip4sale.com Private Registrant - DISPUTED
Claim Number: FA1104001385078
Complainant is Tropical MBC, LLC (“Complainant”), represented by Melissa D. Doogan of Volpe and Koenig PC, Pennsylvania, USA. Respondent is xxxclip4sale.com Private Registrant - DISPUTED (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xxxclip4sale.com>, registered with New Dream Network, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2011; the National Arbitration Forum received payment on April 21, 2011.
On May 17, 2011, New Dream Network, LLC confirmed by e-mail to the National Arbitration Forum that the <xxxclip4sale.com> domain name is registered with New Dream Network, LLC and that Respondent is the current registrant of the name. New Dream Network, LLC has verified that Respondent is bound by the New Dream Network, LLC 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 May 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@xxxclip4sale.com. Also on May 20, 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 June 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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, 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 <xxxclip4sale.com> domain name is confusingly similar to Complainant’s CLIPS4SALE mark.
2. Respondent does not have any rights or legitimate interests in the <xxxclip4sale.com> domain name.
3. Respondent registered and used the <xxxclip4sale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tropical MBC, LLC, operates an Internet business for adult-oriented material. Complainant conducts its business under the CLIPS4SALE mark. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,554,200 filed January 30, 2006; registered December 30, 2008).
Respondent registered the <xxxclip4sale.com> domain name on March 7, 2008. The disputed domain name resolves to a portal website featuring hyperlinks to the websites of Complainant’s competitors.
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 asserts rights in the CLIPS4SALE mark pursuant to its registration of the mark with the USPTO (Reg. No. 3,554,200 filed January 30, 2006; issued December 30, 2008). The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i), because registration of a mark with a federal trademark authority establishes rights in a mark under the Policy. The Panel also finds that the relevant date for establishing rights in a mark is the filing date under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant contends that Respondent’s <xxxclip4sale.com> domain name is confusingly similar to the CLIPS4SALE mark. Respondent removes a single “s” letter from Complainant’s mark and adds the string of letters “xxx” to the mark. Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that Respondent’s actions have failed to create a domain name that is not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (finding that <xxxbarelylegal.com> domain name to be confusingly similar to the complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition); 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).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Policy ¶ 4(a)(ii) requires that Complainant must make a prima facie showing in support of its allegation that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has satisfied this requirement, the burden shifts to Respondent in order to prove it has rights or legitimate interests in the domain name. The Panel finds that Complainant has met its burden of making a prima facie showing, and because Respondent failed to respond to these proceedings, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). However, the Panel will proceed to review the record under Policy ¶ 4(c) to determine if Respondent does have any rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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.”).
Complainant contends that Respondent is not commonly known by the disputed domain name and that Respondent has not received authorization to use the CLIPS4SALE mark. The Panel finds there is nothing in the record that would support a finding that Respondent is commonly known by the disputed domain name. Furthermore, the WHOIS information does not contain any information that would support a finding that Respondent is commonly known by the disputed domain name. Due to this lack of evidence, the Panel finds that Respondent is not commonly known by the <xxxclip4sale.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent uses the disputed domain name to direct Internet users to a website containing hyperlinks to the websites of Complainant’s competitors in the adult entertainment business. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s disputed domain name resolves to a website featuring links to Complainant’s competitors. The Panel concludes that Respondent’s use of the disputed domain name disrupts Complainant’s business, which is evidence of 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers that Respondent receives click-through fees from the hyperlinks posted on the website resolving from the disputed domain name. Complainant contends that Internet users searching for Complainant may be redirected to Respondent’s resolving website. At this point, Internet users are likely to become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website, and featured hyperlinks. The Panel finds that such use is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xxxclip4sale.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 16, 2011
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