national arbitration forum

 

DECISION

 

Tropical MBC, LLC v. thomas mcdaniel

Claim Number: FA1108001404860

 

PARTIES

Complainant is Tropical MBC, LLC (“Complainant”), represented by Volpe and Koenig PC, Pennsylvania, USA.  Respondent is thomas mcdaniel (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clips-4-cash.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

David P. Miranda, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2011; the National Arbitration Forum received payment on August 25, 2011.

 

On August 26, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <clips-4-cash.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@clips-4-cash.com.  Also on September 1, 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.

 

A timely Response was received and determined to be complete on September 2, 2011.

 

On August 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Tropical MBC, LLC of Philadelphia, Pennsylvania (“Complainant”), is the owner of service marks registered with the USPTO, CLIPS4SALE.COM (Registration No. 3,508,680) and CLIPS4SALE (Registration No. 3,554,200), for entertainment services. Namely, it provides a web site featuring downloadable film clips, photographs and other multimedia materials in IC 41.  Complainant contends that the marks have been used in commerce since at least as early as July 2003, and the trademarks have been registered since 2008.

 

Complainant seeks the transfer of domain name <clips-4-cash.com> owned by Thomas McDaniel.  Complainant contends that it has established a strong secondary meaning for its services in the field of adult-entertainment oriented media available on the internet.  Complainant contends that the domain name is confusingly similar to its marks and that Respondent’s addition of the word “cash” in place of “sale” is not sufficient to overcome a claim of confusing similarity.  Complainant contends that Respondent has no rights or legitimate interests in the infringing domain name because it is a blatant attempt to trade on the goodwill established by Complainant and Respondent does not have any authorization to use Complainant’s mark and Respondent is not commonly known by the disputed domain name prior to its knowledge of Complainant’s rights.  Complainant further contends that Respondent’s registration and use is in bad faith because Respondent has clearly intended to capitalize upon the goodwill associated with Complainant’s established marks and that Respondent’s website is being used as a portal for Respondent’s infringement.

 

B. Respondent

Respondent claims he came up with the domain name <clips-4-cash.com>.  He did not know the domain name would cause a problem with anyone, and contends it is not the same as the mark CLIPS4SALE.COM.  Respondent contends there is significant difference in appearance and that he is not trying to “get over” on anyone’s website.

 

FINDINGS

The Panel finds that Complainant has established that it has a registered trademark, that the domain name at issue is confusingly similar to its registered mark, that the Respondent has not established a legitimate right or interest to the name outside the use of the domain name, but Complainant has failed to establish that the Respondent has registered, and is using, the domain name in bad faith.

 

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."

 

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 contends that it has established its rights in the CLIPS4SALE and CLIPS4SALE.COM marks by registering that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,508,680 registered September 30, 2008).  Complainant has submitted the trademark certificate from the USPTO to verify its contentions.  See Complainant’s Exhibit 6.  Complainant has established its rights in the CLIPS4SALE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.  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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant also contends that Respondent’s <clips-4-cash.com> domain name is confusingly similar to its CLIPS4SALE.COM mark.  According to Complainant, the disputed domain name includes the distinctive portion of the mark merely substituting the term “cash” for the term SALE in the mark, and adds hyphens between the terms of the domain.  Since Respondent has failed to make any claim that the marks are merely descriptive, or to differentiate the marks, the Panel finds the changes do not sufficiently differentiate the disputed domain name from Complainant’s mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See  Goodwill Cmty. Found. Inc. v. Texas Int’l Prop. Assocs. - NA NA, FA 1242250 (Nat. Arb. Forum Mar. 10, 2009) (finding confusing similarity even though the respondent replaced the term “GLOBAL” of Complainant’s GCF GLOBAL LEARNING with the term “free”); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen").

 


Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the disputed domain name.  Complainant refers to the WHOIS information to support its argument because the WHOIS information identifies the registrant of the disputed domain name as “thomas mcdaniel.”  Complainant also argues that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name.  According to Complainant, the disputed domain name resolves to a website offering competing materials in the adult-oriented materials industry.  Complainant submits a screen shot of the website which appears to corroborate its argument.  See Complainant’s Exhibit 1.  Respondent has submitted no contentions or evidence addressing this element of the Policy.  Thus, the Panel finds that Complainant has sufficiently established Respondent is not commonly known by the disputed domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s disputed domain name disrupts its business and is thus being used in bad faith, but submits no proof.  According to Complainant, Respondent offers an adult-oriented video service from the website to which the disputed domain name resolves.  Complainant claims that it is also in the adult-oriented materials industry, thereby making Respondent’s website a competitor.  Internet users may arrive at Respondent’s website and utilize its services rather than Complainant’s own service offerings.  Therefore, Complainant contends Respondent’s disputed domain name may disrupt Complainant’s business providing supporting evidence of bad faith registration and use under 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.  Complainant submits no proof of the diversion of business or any sufficient evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

Complainant has failed to meet its burden of proof of establishing bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

Complainant has failed to establish that Respondent has registered and used the <clips-4-cash.com> domain name in bad faith or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

 


DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <clips-4-cash.com> domain name REMAIN WITH Respondent.

 

 

David P. Miranda, Esq., Panelist

Dated:  September 14, 2011

 


 

 

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