Gongshow Gear Inc. v. Domain Privacy Group
Claim Number: FA1307001509948
Complainant is Gongshow Gear Inc. (“Complainant”), represented by Croll & Co. Ltd., Alabama, USA. Respondent is Domain Privacy Group (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gongshow.com>, registered with Domain Privacy Group.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 16, 2013; the National Arbitration Forum received payment July 16, 2013.
On Jul 17, 2013, Domain Privacy Group confirmed by e-mail to the National Arbitration Forum that the <gongshow.com> domain name is registered with Domain Privacy Group and that Respondent is the current registrant of the name. Domain Privacy Group verified that Respondent is bound by the Domain Privacy Group registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2013, 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@gongshow.com. Also on July 23, 2013, 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 August 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant contends it has rights in the GONGSHOW mark, used in connection with lifestyle hockey apparel. Complainant has rights in the GONGSHOW mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,400,170 registered March 18, 2008). See Complainant’s Exhibit 1 and 14.
b) Complainant provides evidence of the fame of its GONGSHOW mark by providing exhibits of a Google search for the term “gongshow” and “gong show.” See Complainant’s Exhibit 5 and 6. Further, Complainant provides exhibits detailing its established reputation on social media sites such as Instagram, Twitter, and Facebook. See Complainant’s Exhibits 8 – 10.
c) The disputed domain name is identical to Complainant’s mark. Respondent’s <gongshow.com> domain name contains Complainant’s mark in its entirety.
d) Respondent does not own any rights or legitimate interests in the <gongshow.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent has not demonstrated any bona fide offering of goods or services or any legitimate noncommercial or fair use. Although Complainant notes that Respondent stated in an email that the disputed domain name is “for a project that is currently under development,” the resolving website remains undeveloped as of July 3, 2013. See Complainant’s Exhibit 19.
c. The disputed domain name was purchased by Respondent November 15, 2012.
e) Respondent registered and is using the <gongshow.com> domain name in bad faith.
a. Respondent offered to sell the disputed domain name to Complainant for $18,000.00 and never specifically disclosed any out-of-pocket costs to acquire the domain name.
b. Complainant fears that Respondent’s alleged “project” for which the disputed domain name was originally purchased could potentially attract Internet users by creating a likelihood of confusion with Complainant’s mark, which Respondent would commercially benefit from.
c. Respondent is deemed to have had knowledge of Complainant’s GONGSHOW mark at the time of registering the <gongshow.com> domain name because of the fame of Complainant’s mark and the identical nature of the use by Respondent.
Respondent did not submit a Response in this proceeding.
Complainant established that it has rights in the mark contained in
its entirety within the disputed domain name.
The disputed domain name is identical to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used, or passively held, the disputed domain name in bad faith.
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 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant contends it has rights in the GONGSHOW mark, used in connection with lifestyle hockey apparel. Complainant states that its rights are established by registration of the GONGSHOW mark with the USPTO (e.g., Reg. No. 3,400,170 registered March 18, 2008). See Complainant’s Exhibit 1. The Panel agrees and finds that Complainant has rights in the GONGSHOW mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”).
Complainant next alleges that the disputed domain name is identical to Complainant’s mark. Complainant observes that Respondent’s <gongshow.com> domain name contains Complainant’s mark in its entirety. The Panel also notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com,” which is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. The Panel finds here that Respondent’s <gongshow.com> domain name is identical to Complainant’s GONGSHOW mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to 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 of proof shifts to Respondent to show it does have such 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 claims that Respondent does not own any rights or legitimate interests in the <gongshow.com> domain name. Complainant urges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record for the disputed domain name lists “Domain Privacy Group” as the domain name registrant. Past panels have looked to the WHOIS record for evidence of whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, this Panel finds that Respondent is not commonly known by the <gongshow.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has not demonstrated any bona fide offering of goods or services or any legitimate noncommercial or fair use. Although Complainant notes that Respondent stated in an e-mail correspondence to Complainant that the <gongshow.com> domain name is “for a project that is currently under development,” Complainant states that the resolving website remains undeveloped as of July 3, 2013. See Complainant’s Exhibit 19. Past panels have found that a respondent who intends to develop a website must show evidence of such preparations to use the disputed domain name in order to rightfully claim rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”). Further, past panels have found that a failure to make an active use is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s failure to make an active use of the <gongshow.com> 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)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent offered to sell the disputed domain name to Complainant for $18,000.00 and never specifically disclosed any out-of-pocket costs to acquire the domain name. Complainant describes e-mail correspondence between the parties, wherein Respondent claims that it did not buy the domain name to sell for a profit, but later admits that it would seek compensation of a price “as high as reasonably possible.” Complainant contends that such an offer to sell by a respondent has been found to be in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). However, to find bad faith pursuant to Policy ¶ 4(b)(i), the Panel may also find that Respondent acquired the domain name primarily for the purpose of selling the domain name to Complainant or Complainant’s competitor. See Policy ¶ 4(b)(i). Therefore, since the Panel finds that Respondent acquired the <gongshow.com> domain name for the primary purpose of selling it to Complainant, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant states that Respondent’s alleged “project” for which the disputed domain name was originally purchased could potentially attract Internet users by creating a likelihood of confusion with Complainant’s mark, from which Respondent would commercially benefit. The Panel notes that Complainant does not assert that Respondent is receiving any current commercial gain from the disputed domain name, only that there is a possibility for such future commercial gain. Past panels have found that such an attempt to obtain commercial gain by misleading Internet users, even for a project unrelated to Complainant, constitutes bad faith under Policy ¶4(b)(iv). See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that without proof of Respondent’s current commercial gain, the Panel is unable to find bad faith as to Respondent’s registration and use of the <gongshow.com> domain name under a Policy ¶ 4(b)(iv) evaluation.
Lastly, Complainant asserts that Respondent had knowledge of Complainant’s GONGSHOW mark at the time of registering the <gongshow.com> domain name given the fame of Complainant’s mark. Support for this position is demonstrated by results of a Google search, which puts Complainant’s website as the first or second search ranking. Complainant further urges that Respondent is charged with constructive notice of Complainant’s mark, based on the mark’s USPTO registrations. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel further finds that Respondent’s passive holding, which is not a bona fide use, also supports findings of bad faith registration and use.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gongshow.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 4, 2013.
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