Despair, Inc. v. Caleb Paine
Claim Number: FA1112001418900
Complainant is Despair, Inc. (“Complainant”), represented by Lawrence Kersten, Texas, USA. Respondent is Caleb Paine (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thedemotivators.com> and <hotdemotivators.net>, registered with GoDaddy.com, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2011; the National Arbitration Forum received payment on December 7, 2011.
On December 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thedemotivators.com> and <hotdemotivators.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 December 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@thedemotivators.com and postmaster@hotdemotivators.net. Also on December 9, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
[a.] Despair, Inc. is an e-commerce business that was founded in 1998 and uses the domain despair.com. Despair, Inc. has created a global brand that capitalizes upon workplace demotivation by satirizing motivational products.
One of Despair, Inc.’s signature products is a line of motivational poster parodies called Demotivators®. Despair, Inc. owns the mark Demotivators® and has been using it in commerce since 1999. The registration numbers for the mark are 2348711 and 2347675. Despair, Inc. has been very careful in the application of its mark and uses it exclusively to refer its own unique brand of motivational poster parodies.
In addition to the trademark for Demotivators®, Despair has owned and used the domain “demotivators.com” since May 1998. It resolves to the same site as despair.com.
Despair, Inc. also owns “demotivation.com” and uses that domain to market a book entitled The Art of Demotivation.
Though Despair, Inc. provides an online tool that enables its customers to create their own motivational posters parodies, it never refers to its customers’ creations as Demotivators®. They are referred to simply and generically as “motivational poster parodies.”
Despair, Inc. also offers products others than Demotivators®, but given the popularity of Demotivators®, it is the product line most closely associated with the Despair, Inc. brand.
Despair, Inc. has invested significant resources in creating its brand and defending its mark. As a result of these efforts, Despair, Inc. is a brand that is best known for offering humorous demotivational products.
thedemotivators.com and hotdemotivators.net are confusingly similar because they include the mark Demotivators®. This confusion is compounded by the fact that thedemotivators.com and hotdemotivators.net offer motivational poster parodies that ape the design elements of Demotivators®.
[b.] Mr. Caleb Paine should be considered as having no rights or legitimate interest in thedemotivators.com or hotdemotivators.net for the following three reasons:
(i) There is no evidence that that the respondent intended to use the domain in connection with a bona fide offering of goods or services;
(ii) The respondent has not been commonly known by the domain name;
(iii) The respondent is selling advertising on his site. He has intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with Despair’s mark as to the source, sponsorship, affiliation, or endorsement of his web site.
[c.] thedemotivators.com and hotdemotivators.net should be considered as having been registered in bad faith for the following four reasons:
(i) Inappropriately use the mark Demotivators® to refer to motivational poster parodies that are not created by Despair, Inc.
(ii) By including the trademark Demotivators® in the domain names--a term closely associated with the Despair, Inc. brand—and administering web sites that serve motivational posters parodies inaccurately and illegally referred to as Demotivators®, the respondent is creating confusion with Despair, Inc’s mark as to the source, sponsorship, affiliation, or endorsement of the thedemotivators.com and hotdemotivators.net sites.
(iii) The respondent has used the mark Demotivators® for commercial gain and, in so doing, has misleadingly diverted consumers.
(iv) The vulgar nature of many of the items tarnishes the Demotivators® mark.
B. Respondent failed to submit a Response in this proceeding.
Complainant Despair, Inc. has created a line of motivational poster parodies capitalizing upon workplace demotivation, which are featured at its <despair.com> domain name. Complainant has registered the DEMOTIVATORS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,347,675 registered May 2, 2000).
Respondent Caleb Paine registered the <thedemotivators.com> domain name on July 13, 2008 and registered the <hotdemotivators.net> domain name on September 21, 2011. The disputed domain names resolve to websites featuring demotivational posters similar in nature to those featured on Complainant’s site. Respondent’s websites feature the DEMOTIVATORS mark, as well as sponsored links to unrelated third-party websites. Additionally, Respondent’s website features adult-oriented material.
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 Complainant to 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 has presented the Panel with evidence of its trademark registrations for the DEMOTIVATORS mark with the USPTO (e.g., Reg. No. 2,347,675 registered May 2, 2000). The Panel holds Complainant’s registrations with the USPTO adequately establish Complainant’s rights in the mark under Policy ¶4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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).”).
Each disputed domain name includes Complainant’s DEMOTIVATORS mark in its entirety, and each affixes a generic top-level domain (“gTLD”). It is well-established the addition of a gTLD does not affect confusingly similar comparisons under Policy ¶4(a)(i). 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). The <thedemotivators.com> domain name also adds the word “the” to Complainant’s mark. Previous panels have been clear this does not create a unique, non-confusing domain name. See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”). The <hotdemotivators.net> domain name adds the generic term “hot” to Complainant’s mark. This too cannot adequately distinguish a disputed domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). In light of these findings, the Panel holds the <thedemotivators.com> and the <hotdemotivators.net> domain names are confusingly similar to Complainant’s DEMOTIVATORS mark within the meaning of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
When arguing a case under the Policy, Complainant must first present a prima facie case before the burden is shifted to Respondent to refute Complainant’s claims. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also 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.”). Complainant in this case has met its burden, while Respondent has not responded. Out of an abundance of caution, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name on other grounds.
Complainant asserts Respondent is not commonly known by either disputed domain name for the purposes of Policy ¶4(c)(ii). Respondent has failed to satisfy its burden of providing the Panel with any Response, so there is no evidence in the record to refute Complainant’s claims. Additionally, the WHOIS information for the disputed domain names identify the domain name registrant as “Caleb Paine.” The Panel fails to find any similarity to either the <thedemotivators.com> or the <hotdemotivators.net> domain name. Based on the foregoing, the Panel concludes Respondent is not commonly known by either disputed domain name for the purposes of 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 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).
Complainant further asserts Respondent’s use of the disputed domain names cannot be considered a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii). The disputed domain names resolve to websites featuring demotivational posters similar in nature to those featured on Complainant’s site, which include Complainant’s mark as well as sponsored links to unrelated third-party websites. The Panel finds Respondent’s offering of services similar to those offered by Complainant while operating at confusingly similar domain names to attract visitors to its site to increase the revenue does not constitute either 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant urges the Panel to find Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶4(a)(ii) based on the adult-oriented content featured at the <thedemotivators.com> and the <hotdemotivators.net> domain names. The Panel agrees some content housed at the disputed domain names can be considered adult-oriented and that such use negates rights or legitimate interests under Policy ¶4(a)(ii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s use of the disputed domain name to operate a site featuring material substantially similar to that featured on Complainant’s site suggests registration and use in bad faith under Policy ¶4(b)(iii). Respondent offers its own demotivational posters on its site, each of which is referred to using the DEMOTIVATORS mark. The Panel finds bad faith disruption of Complainant’s business 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. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant claims Respondent’s registration and use of the disputed domain names exhibits bad faith for commercial gain under Policy ¶4(b)(iv). By choosing a disputed domain name and offering its own motivational poster parodies using the DEMOTIVATORS mark, Respondent is creating confusion as to Complainant’s affiliation with the content featured at the disputed domain names. The Panel infers Respondent derives some commercial benefit from the sponsored advertisements featured on its sites. When confusion is created about the source of a disputed domain name, and a respondent capitalizes on that confusion by turning a commercial gain from it, previous panels have found bad faith attraction for commercial gain under Policy ¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). This Panel agrees and finds Respondent’s registration and use of the disputed domain names to constitute bad faith under Policy ¶4(b)(iv).
Complainant also urges the Panel find bad faith under Policy ¶4(a)(iii) based on the adult-oriented content featured at the <thedemotivators.com> and the <hotdemotivators.net> domain names. Respondent has not contested this allegation. The Panel holds Respondent’s registration and use of the disputed domain names to resolve to such material evidences bad faith under Policy ¶4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
The Panel finds the elements of Policy ¶4(a)(iii) to be satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <thedemotivators.com> and the <hotdemotivators.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 12, 2012
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