Path Media Holdings, LLC v. Jim durflo
Claim Number: FA1203001435699
Complainant is Path Media Holdings, LLC (“Complainant”), represented by Aaron D. Aftergood, California, USA. Respondent is Jim durflo (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <girlsgonewild.name>, registered with GoDaddy.com. 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2012; the National Arbitration Forum received payment on March 21, 2012.
On March 22, 2012, GoDaddy.com. LLC confirmed by e-mail to the National Arbitration Forum that the <girlsgonewild.name> domain name is registered with GoDaddy.com. LLC and that Respondent is the current registrant of the name. GoDaddy.com. LLC has verified that Respondent is bound by the GoDaddy.com. 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 March 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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@girlsgonewild.name. Also on March 23, 2012, 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 April 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant makes the following submissions:
1. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its GIRLS GONE WILD mark (Reg. No. 4,010,741 filed June 18, 2007; registered August 16, 2011).
2. The <girlsgonewild.name> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark.
3. Respondent is making an illegitimate commercial use of the disputed domain name.
4. Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its GIRLS GONE WILD mark (Reg. No. 4,010,741 filed June 18, 2007; registered August 16, 2011).
2. Respondent registered the <girlsgonewild.name> domain name on February 3, 2006.
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.
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.”).
The first question that arises is whether Complainant has rights to a trademark or service mark. Complainant provided the Panel with evidence of its trademark registrations for its GIRLS GONE WILD mark with the USPTO (Reg. No. 4,010,741 filed June 18, 2007; registered August 16, 2011). The Panel determines that Complainant’s USPTO trademark registration establishes Complainant’s rights in its GIRLS GONE WILD mark under Policy ¶ 4(a)(i), dating back to the filing date of June 18, 2007. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
The second question is whether Respondent’s <girlsgonewild.name> domain name is identical or confusingly similar to the GIRLS GONE WILD mark. Complainant alleges that domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark. However, the Panel notes that the disputed domain name and Complainant’s mark differ by the removal of the spaces and the addition of the generic top-level domain (“gTLD”) “.name.” As the Panel finds that these are the only changes to Complainant’s mark, the Panel concludes that the <girlsgonewild.name> domain name is identical to Complainant’s GIRLS GONE WILD mark pursuant to Policy ¶ 4(a) (i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GIRLS GONE WILD trademark and to use it in his domain name, creating the likelihood that internet users would assume that it was an official domain name of Complainant and that , if used, it would lead to an official website of Complainant;
(b) Complainant does not make any contentions regarding whether or not Respondent is commonly known by the <girlsgonewild.name> domain name. As Respondent did not respond to this case, the Panel nevertheless notes that Respondent failed to submit evidence that he is commonly known by the disputed domain name and the inference must therefore be that he is not so known. As for the evidence in the record, the Panel notes that the WHOIS information lists “Jim durflo” as the registrant of the disputed domain name, which the Panel finds is not similar to the <girlsgonewild.name> domain name. Based on the WHOIS information, the Panel therefore finds that Respondent is not commonly known by the <girlsgonewild.name> domain name for the purposes of 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).
These matters go to make out the prima facie case against Respondent. The Panel notes here that normally a Complainant is able to and is expected to adduce more evidence than Complainant has on this occasion to make out the prima facie case required. For instance, Complainant contends that Respondent makes an illegitimate, commercial use of the <girlsgonewild.name> domain name , but does not provide any evidence of what the <girlsgonewild.name> domain name resolves to and has not provided any further explanation as to how Respondent’s use is illegitimate or commercial.
However, as it is only a prima facie case that has to be established at this stage, the Panel finds that the above two matters make out a prima facie case. The Panel takes this opportunity to remind parties and their advisers that the continued efficacy of the UDRP depends on their supporting their assertions by evidence and putting forward all of the evidence necessary to support their case.
There being a prima facie case and Respondent not having filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that Complainant has not established that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant has not made out any of the criteria set out in Policy ¶ 4(b) and has not argued or shown that there are other matters that can be described as bad faith within the generally accepted meaning of that expression. Indeed, Complainant has not attempted to do so. Complainant’s entire case on the issue of bad faith is as follows: “By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.” No evidence has been submitted to show that this has happened or how it happened. As panels have said on many occasions, mere assertions are not enough to prove a case and any submissions must be supported by evidence. It is certainly not enough merely to paraphrase provisions of the Policy. If a panel were to accept a case without proper submissions and evidence it would make the Policy a very inadequate and unsatisfactory procedure and it would be unfair to the vast majority of parties who present complete cases with evidence and reasoned arguments and who go to a lot of trouble and expense to do so.
Secondly, to allow a case to succeed without proof would be contrary to the plain words of the Policy, which provide that “…the Complainant must prove that each of these three elements are present.” The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a) (iii) as it has not proved that the element now under consideration is present. 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).
Thirdly and in particular, Complainant asserts that Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s affiliation with the disputed domain name. But Complainant has not provided any evidence or arguments that support those allegations and it is impossible for the Panel to conclude whether they are true or not. Therefore, the Panel finds that Complainant failed to prove that Respondent registered and uses the <girlsgonewild.name> domain name under Policy ¶ 4(b) (iv).
Fourthly, the Panel notes that Complainant’s rights in the GIRLS GONE WILD mark, according to the USPTO trademark registration, date back to June 18, 2007. The Panel notes that Respondent registered the <girlsgonewild.name> domain name on February 3, 2006. Thus, the Panel therefore concludes that Respondent’s registration of the disputed domain name predates Complainant’s rights in the GIRLS GONE WILD mark. Consequently, the Panel holds, in keeping with established UDRP jurisprudence and practice and consistent with many UDRP decisions, that Respondent could not have registered the <girlsgonewild.name> domain name in bad faith under Policy ¶ 4(a) (iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <girlsgonewild.name> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 24, 2012
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