Tropical MBC, LLC. v. John Bull
Claim Number: FA1211001473820
Complainant is Tropical MBC, LLC (“Complainant”), represented by Kristine L. Butler of Volpe and Koenig PC, Pennsylvania, USA. Respondent is John Bull (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4s.com>, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.
On December 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <clips4s.com> 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 December 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@clips4s.com. Also on December 5, 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.
A timely Response was received and determined to be complete on December 6, 2012.
Complainant submitted an Additional Submission that was received on December 12, 2012, after the deadline for submission, and which is therefore not considered to be in compliance with Supplemental Rule #7. However, in its discretion, the Panel shall consider Complainant’s Additional Submission.
Respondent submitted an Additional Submission that was received on December 12, 2012, and is therefore considered timely in accordance with Supplemental Rule #7.
On December 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the owner and operator of the websites operating at the domain names <clips4sale.com> and <c4s.com>.
2. Complainant’s domain names feature adult-entertainment oriented media offered under the trademarks CLIPS4SALE.COM, CLIPS4SALE, C4S, and C4S.com.
3. Complainant is the owner of the following trademark registrations with the United States Patent and Trademark Office (“USPTO”):
CLIPS4SALE.COM Reg. No. 3,508,680 registered September 30, 2008;
CLIPS4SALE Reg. No. 3,554,200 registered December 30, 2008;
C4S Reg. No. 4,099,642 registered February 14, 2012; &
C4S.COM Reg. No. 4,099,643 registered February 14, 2012.
4. The disputed domain name is registered in the name of Respondent, “John Bull.”
5. The disputed domain name is identical to or confusingly similar to a trademark or service mark in which Complainant has rights as Respondent has merely shortened “sale” to “s” in the domain name.
6. Respondent’s website is a direct competitor of Complainant.
7. Respondent’s confusingly similar domain name is a blatant attempt to trade on the goodwill established by Complainant after great efforts.
8. Respondent has no connection or affiliation with Complainant and does not have a license or consent, express or implied, to use Complainant’s mark in a domain name.
9. Respondent was not commonly known by the disputed domain name prior to its actual knowledge of Complainant’s rights.
10. Respondent’s website is being used as a portal for Respondent’s infringement.
11. Respondent’s website is an adult-themed website displaying graphic photographs of women and targeting the same customers as Complainant.
12. Respondent has clearly intended to capitalize upon the goodwill associated with Complainant’s marks and this conduct falls squarely within the conduct described in Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
B. Respondent
1. Respondent had no intention of competing or infringing any trademark when it purchased the disputed domain name.
2. Respondent’s only intention was using the disputed domain name in connection with a foot fetish fan’s website.
3. There was no selling activity on the resolving website; there were only some links of clips hosted on domain names other than the <clips4s.com> domain name.
4. Respondent purchased the available domain name fair and square.
5. As a sign of good faith, Respondent stopped the activity of the website immediately after receiving the present complaint.
C. Complainant’s Additional Submission
1. Respondent’s Response is disingenuous at best.
2. Respondent’s assertion that there was no selling on the resolving website is clearly not true because the screen capture of the resolving website shows Respondent offering for sale various types of “Premium” Accounts, which allegedly provide the viewer with faster downloads of the available clips and storage of these clip files.
3. The links Respondent acknowledges displaying on the resolving website are the same type of video clips that Complainant provides on its domain names.
4. Complainant reiterates that Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the infringing domain name in bad faith.
D. Respondent’s Additional Submission
1. Complainant has no facts to support its false accusations that Respondent’s previous Response was disingenuous.
2. The premium accounts mentioned by Complainant have nothing to do with the <clips4s.com> domain name and there was no reference of any of the premium accounts on the disputed domain name.
3. Respondent reiterates that it did not sell anything but merely posted some links it found on the Internet. Respondent removed these links as soon as it received the Complaint.
Complainant, Tropical MBC, LLC., is the owner of the following trademark registrations with the United States Patent and Trademark Office (“USPTO”):
CLIPS4SALE.COM Reg. No. 3,508,680 registered September 30, 2008;
CLIPS4SALE Reg. No. 3,554,200 registered December 30, 2008;
C4S Reg. No. 4,099,642 registered February 14, 2012; &
C4S.COM Reg. No. 4,099,643 registered February 14, 2012.
Complainant’s domain names feature adult-entertainment oriented media offered under the trademarks CLIPS4SALE.COM, CLIPS4SALE, C4S, and C4S.COM.
Respondent, John Bull. registered the <clips4s.com> domain name on November 17, 2012.
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.
Complainant’s USPTO trademark registrations are sufficient to prove Complainant’s rights in the marks, even though Respondent’s location is not within the U.S. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction),
Complainant asserts that Respondent’s <clips4s.com> wholly incorporates a variation of Complainant’s CLIPS4SALE, CLIPS4SALE.COM, C4S, and C4S.COM marks. In both its Complaint and Additional Submission, Complainant argues that the disputed domain name is therefore nearly identical and confusingly similar to Complainant’s marks. Complainant argues that Respondent has merely shortened the term “sale” in the CLIPS4SALE.COM mark to the letter “s” in the disputed domain name. The Panel finds that this deletion of a few letters from Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity with Complainant’s mark. See Invisible Fence, Inc. v. Webs Master, FA 1081994 (Nat. Arb. Forum Nov. 6, 2007) (finding the <inviablefence.com> domain name domain name confusingly similar to the INVISIBLE FENCE mark despite the removal of letters and the addition of a letter). The Panel therefore finds that Respondent’s <clips4s.com> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark according to Policy ¶ 4(a)(i).
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).
Complainant contends that the registrant of the disputed domain name, as identified in the WHOIS information is “John Bull.” Complainant alleges that Respondent has no connection or affiliation with Complainant and does not have a license or consent, express or implied, to use Complainant’s mark in a domain name or any other manner. Complainant argues that Respondent was not commonly known by the disputed domain name prior to Respondent’s actual knowledge of Complainant’s rights. The Panel finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests 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).
Complainant asserts that Respondent’s disputed domain name resolves to a website that is a direct competitor of Complainant. Complainant contends that Respondent’s disputed domain name is a blatant attempt to trade on the goodwill established by Complainant. Complainant argues that Respondent’s disputed domain name is being used as a portal for Respondent’s infringement by linking to Respondent’s own directly competing website. In its Additional Submission, Complainant alleges that the links displayed on the resolving website are the same type of video clips that are provided at Complainant’s domain names. The Panel finds that Respondent’s use of the disputed domain name to host a competing website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
In its Additional Submission, Complainant also challenges Respondent’s assertion that there was no selling activity on the resolving website. Complainant argues that this statement is not true as the screen captures show that Respondent was offering various types of “Premium” accounts, which allegedly provide the viewer with faster downloads of the available clips and storage of the clip files forever. The Panel finds that the use of the disputed domain name to display these commercial links is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant argues that in registering the disputed domain name, Respondent has clearly intended to capitalize on the goodwill associated with Complainant’s established mark and this conduct falls squarely within the conduct described in Policy ¶ 4(b)(iii). In its Complaint and Additional Submission, Complainant asserts that Respondent’s disputed domain name directs Internet users to Respondent’s own website that displays links to the same type of video clips that are provided on Complainant’s domain names. The Panel finds that Respondent’s use of the disputed domain name facilitates competition with Complainant and thus disrupts Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also alleges that Respondent’s conduct and its efforts to capitalize upon the goodwill associated with Complainant’s mark falls squarely within Policy ¶ 4(b)(iv). Complainant asserts in its Complaint that the disputed domain name resolves to Respondent’s own website, which is an adult-themed website displaying graphic photographs of women and targeting the same customers as Complainant. In its Additional Submission, Complainant contends that Respondent also offers “Premium” accounts at the resolving website, which allegedly provide the viewer with faster downloads of the available clips and storage of these clip files forever. Based on Complainant’s allegations, the Panel infers that Respondent profits in some way from its operation of the disputed domain name and registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) in order to attract and confuse consumers for its own commercial gain. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clips4s.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 3, 2013
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