Allan Pinedo Lindo aka apl.de.ap v. Moniker Privacy Services
Claim Number: FA1407001570320
Complainant is Allan Pinedo Lindo aka apl.de.ap (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is Moniker Privacy Services (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apldeap.com>, registered with Godomaingo.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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2014; the National Arbitration Forum received payment on July 17, 2014.
On July 28, 2014, Godomaingo.com LLC confirmed by e-mail to the National Arbitration Forum that the <apldeap.com> domain name is registered with Godomaingo.com LLC and that Respondent is the current registrant of the name. Godomaingo.com LLC has verified that Respondent is bound by the Godomaingo.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 July 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2014 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@apldeap.com. Also on July 28, 2014, 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 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
5. Respondent has registered and used the disputed domain name in bad faith. Respondent has held the disputed domain name out for sale and has at several occasions requested bids for the sale of the disputed domain name. See Compl., at Attached Ex. 22. Second, Respondent is promoting his own competing music endeavors in a manner that disrupts the business done under the APL.DE.AP mark. Third, Respondent is profiting from a likelihood Internet users will take the message on the domain name’s website as showing APL.DE.AP’s endorsement of Respondent’s own music offerings.
B. Respondent
1. Respondent did not submit a response.
2. The Panel notes <apldeap.com> domain name was registered August 30, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used 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 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.”).
Complainant is APL.DE.AP, a recording producer and founding member of the Grammy Award-winning group “The Black Eyed Peas.” Complainant contends that as APL.DE.AP he has contributed to include “Gettin’ Dumb,” “I Gotta Feeling,” and “Boom Boom Pow.” Complainant adopted the name APL.DE.AP as early as 1988, but became most prominent under this name when “The Black Eyed Peas” were formed in 1995. Outside of his collaboration with the band, APL.DE.AP has enjoyed a successful solo career. He released a 2010 music video called “Jump In,” has coached a popular Filipino reality singing contest, won awards in 2010 and 2012 for his music achievements, and was honored by Philippines President Benigno Aquino in 2012. Complainant includes from Annex 2–14 evidence of the prevalence of the APL.DE.AP mark. Complainant claims these facts go to show the mark has acquired secondary meaning sufficient to have standing under Policy ¶ 4(a)(i). In Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel found that extensive evidence of use of a mark could give rise to Policy ¶ 4(a)(i) rights in the absence of a trademark when the use of the mark is as such that consumers identify the mark with a source or originator of a given good or service, and not merely with the good itself. Here the Panel agrees Complainant’s continued use of APL.DE.AP to promote his music and entertainment endeavors is evidence of Policy ¶ 4(a)(i) common law rights.
Complainant asserts that the disputed domain name is confusingly similar to its APL.DE.AP mark. Complainant contends that the disputed domain name merely removes the periods and adds the gTLD “.com.” The Panel agrees the disputed domain name is identical to the APL.DE.AP mark under Policy ¶ 4(a)(i). See, e.g., Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
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.”).
Complainant claims Respondent is not commonly known by the disputed domain name. It further claims that Respondent is making the WHOIS registrant information using a privacy shield. The Panel notes that WHOIS reads “Moniker Privacy Services,” and finds that there is no evidence here that Respondent has ever been commonly known as either APL.DE.AP or as the disputed domain name as per 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).
Complainant contends that Respondent is likely Complainant’s former employee. Complainant contends that since the Complainant’s former employee ceased his employment with Complainant, the disputed domain name has been used to promote the former assistant’s own music career. Complainant urges it is unlikely an unrelated third party would have any interest in promoting the Complainant’s former assistant’s career in this manner. Complainant submits that he had held the disputed domain name since 2005, and Respondent, while acting as manager of Complainant’s online presence, allowed the disputed domain name to lapse on his watch rather than follow Complainant’s instructions to turn over the passwords. In light of the circumstances that Complainant has shown, the Panel agrees the disputed domain name is held by Complainant’s former employee or at least its aided person, and thus the panel determines that the continued holding of the disputed domain name is in violation of Policy ¶ 4(c)(i), ¶ 4(c)(iii). See, e.g., Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name).
Complainant asserts the disputed domain name currently rests at a parked website filled with hyperlink advertisements. See Compl., at Attached Ex. 20. The Panel agrees this website is neither bona fide under Policy ¶ 4(c)(i), nor legitimately noncommercial or fair under Policy ¶ 4(c)(iii). See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant asserts that he had held the disputed domain name since 2005, and Respondent hiding behind the privacy shield, while acting as manager of Complainant’s online presence, allowed the disputed domain name to lapse on his watch rather than follow Complainant’s instructions to turn over the passwords. Complainant further contends that Respondent has held the disputed domain name out for sale and has at several occasions requested bids for the sale of the disputed domain name. See Compl., at Attached Ex. 21–22. The Panel is of the view that a general offer for the sale of domain names does not constitute always bad faith registration or use. The circumstances such as Respondent’s registration of the disputed domain name shortly after Complainant’s lapse of the disputed domain name, the fact that highly possible Respondent behind the privacy shield had sole access to Complainant’s registrar account, etc., coupled with the manner of Respondent’s requesting bids for the sale of the disputed domain name lead this Panel to determine that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii).
Complainant claims Respondent is promoting his own competing music endeavors in a manner that disrupts the business done under the APL.DE.AP mark. The Panel notes the disputed domain name is being used to promote various hyperlink advertisements, albeit these links are not clear as to a competitive nexus. See Compl., at Attached Ex. 20. The Panel believes these links are competitive, and thus it finds Policy ¶ 4(b)(iii) bad faith. 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 further contends that Respondent is profiting from a likelihood Internet users will take the message on the disputed domain name’s website as showing APL.DE.AP’s endorsement of Respondent’s own music offerings. The Panel notes that Exhibit 20 shows the disputed domain name is used to promote an array of hyperlink advertisements. Previous panels have agreed that bad faith can be traced to a respondent’s profiting from the likelihood Internet users would associate the domain name with Complainant. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). Here the Panel finds this to be the case, especially when the disputed domain name was in fact used to promote Complainant’s endeavors for a number of years. As such, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apldeap.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 1, 2014
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