Fandango, LLC v. DNS Manager / Cenal.com
Claim Number: FA1112001418378
Complainant is Fandango, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is DNS Manager / Cenal.com (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vandango.com>, registered with Moniker Online Services 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 December 5, 2011; the National Arbitration Forum received payment on December 5, 2011.
On December 7, 2011, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <vandango.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@vandango.com. Also on December 13, 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 January 10, 2012, 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 <vandango.com> domain name is confusingly similar to Complainant’s FANDANGO mark.
2. Respondent does not have any rights or legitimate interests in the <vandango.com> domain name.
3. Respondent registered and used the <vandango.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fandango, LLC, is an American company that offers movie information and at-home/remote ticket sales. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its FANDANGO mark (Reg. No. 2,769,579 registered September 30, 2003).
Respondent, DNS Manager / Cenal.com, registered the <vandango.com> domain name on October 18, 2004. Respondent’s disputed domain name resolves to a website offering various competing third-party links, as well as a link to Complainant’s official website.
Respondent has been the respondent in previous UDRP cases in which the panels ordered to transfer of the domain names to the respective complainants. E.g., NSTBC, Inc. v. DNS Manager / Cenal.com, FA 1385407 (Nat. Arb. Forum June 9, 2011); Hayman v. DNS Manager / Cenal.com, FA 1370359 (Nat. Arb. Forum March 17, 2011).
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 that it has rights in its FANDANGO mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO for the mark (Reg. No. 2,769,579 registered September 30, 2003). The Panel agrees and finds that Complainant has established rights in the FANDANGO mark under Policy ¶ 4(a)(i), regardless of Respondent’s physical location in Hong Kong. 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant contends that the <vandango.com> domain name is confusingly similar to Complainant’s FANDANGO mark. Complainant notes that the addition of a generic top-level domain (“gTLD”), such as “.com,” is not applicable to a confusingly similar analysis. See 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); see also 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). Further, the disputed domain name merely switches the letter “f” from Complainant’s mark with the letter “v.” The Panel finds that such a change is not sufficient to render the domain name distinct from the mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Therefore, the Panel finds that the <vandango.com> domain name is confusingly similar to Complainant’s FANDANGO mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any rights or legitimate interests in the <vandango.com> domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”). Nonetheless, the Panel will continue to analyze the evidence in the record to make its determinations under Policy ¶ 4(a)(ii).
Complainant further contends that Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain name identifies Respondent as “DNS Manager / Cenal.com,” and there is no further evidence showing that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant has provided evidence to show that Respondent’s disputed domain name resolves to a website featuring various third-party links in relation to the movie industry. Such links are presented under headings such as “Fandango – Official Site,” “Free Regal Cinema Coupons,” “50% off movie tickets,” and “Movie Showtimes,” among many others. Respondent has not responded to these proceedings to present evidence in support of its own position. Therefore, the Panel finds that Respondent’s use of the disputed domain name, as detailed by Complainant, is not 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Lastly, Complainant alleges that Respondent’s registration of the disputed domain name, which contains a common misspelling of the FANDANGO mark, is evidence of typosquatting. The Panel agrees with Complainant and finds that Respondent engaged in typosquatting through its registration of the <vandango.com> domain name. Typosquatting is evidence of Respondent’s lack of rights in the domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is a serial cybersquatter that has been found by previous UDRP panels to have registered several domain names in bad faith. E.g., NSTBC, Inc. v. DNS Manager / Cenal.com, FA 1385407 (Nat. Arb. Forum June 9, 2011); Hayman v. DNS Manager / Cenal.com, FA 1370359 (Nat. Arb. Forum March 17, 2011). The Panel finds that Respondent’s registration of several trademark infringing domain names in the past is sufficient to render a finding of bad faith in the current instance under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Respondent’s domain name resolves to a website that contains third-party links to Complainant’s official website, as well as to Complainant’s competitors in the movie information and ticket sales industry. The Panel finds that such use invariably disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See 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)(iii) 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); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Further, the Panel infers that Respondent collects click-through or affiliate fees in return for its posting of hyperlinks on the resolving website. The Panel assumes that Respondent displays pay-per-click links on the resolving website with the intention of maximizing gains resulting from Internet users attracted to the website because of the disputed domain name and subsequently confused as to Respondent’s association with Complainant. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. 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).
Lastly, the Panel has already determined that Respondent engaged in typosquatting when it registered and began using the <vandango.com> domain name. The Panel further finds that typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vandango.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 16, 2012
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