Lions Gate Entertainment Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1409001578621
Complainant is Lions Gate Entertainment Inc. (“Complainant”), represented by Jill M. Pietrini of Sheppard, Mullin, Richter & Hampton LLP, California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leapfrogdvds.com>, registered with Internet.bs Corp.
The undersigned certifies he has acted independently and impartially and to the best of his 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 September 5, 2014; the National Arbitration Forum received payment on September 8, 2014.
On September 10, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <leapfrogdvds.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 September 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@leapfrogdvds.com. Also on September 16, 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 October 8, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant Lions Gate Entertainment Inc. (“Lionsgate” or “Complainant”) is a global producer and distributor of television shows and motion pictures, with revenues of $2.63 billion in fiscal year 2014. In 2008, Lionsgate entered into a co-production and distribution agreement with Leapfrog Enterprises, Inc. (“Leapfrog”) for the manufacture and distribution of DVDs. Leapfrog is a children’s educational entertainment company that produces and distributes products such as educational tablets, game consoles, game cartridges and downloadable apps. Leapfrog owns many trademark registrations for its well-known mark LEAPFROG®, including the following U.S. trademark registrations:
LEAPFROG Class 9: Audio and video recordings featuring educational matter for infants and children, computer screensavers.
Class 16: Printed matter, namely, books for infants and children; picture books; books made of paper, cloth and plastic for infants and children; crayons, instruction manuals in the fields of math, spelling, grammar, geography, history, science, trivia and language arts; flashcards, maps, workbooks, word puzzles, school supplies, namely notepads, notebooks. 3,353,167
12/11/2007
Class 9: 9/15/1999
Class 16: 9/11/1999
LEAPFROG Class 9: Musical sound recordings for children. 2,635,552
10/15/2002 Class 9: 9/15/1999
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
As previously stated, Complainant entered into a co-production and distribution agreement with Leapfrog in 2008, which enables Lionsgate to license characters and other intellectual property, including Leapfrog’s trademark LEAPFROG®, from Leapfrog in order to manufacture and distribute DVDs for children.
Lionsgate is the current exclusive licensee of Leapfrog in the manufacture and distribution of DVDs under the LEAPFROG® trademark. As the exclusive licensee, Lionsgate was granted authority by Leapfrog to register and use the Domain Name, in order to promote and advertise the licensed DVDs. Lionsgate registered the Domain Name in 2008. A sworn declaration was executed by an authorized representative from Leapfrog attesting that (i) Lionsgate is the exclusive licensee of Leapfrog for DVDs, (ii) Lionsgate is authorized by Leapfrog to register and use the Domain Name in order to advertise and promote the Leapfrog DVDs, and (iii) Lionsgate has the permission of Leapfrog to bring this UDRP proceeding.
Lionsgate, as Leapfrog’s exclusive licensee for DVDs under the LEAPFROG® trademark, has trademark rights and therefore standing to bring this UDRP proceeding. Time Warner Cable Inc. v. Taiwan – China Entrepreneurs Organization, FA 1207001452714 (NAF Aug. 19, 2012) (“Complainant is the exclusive licensee of the trademark according to a sworn statement accompanying the Complaint. For the purposes of the Policy, the Panel is satisfied that Complainant has trademark rights.”); Fossil, Inc. v. Zhang qianqian / zhangqianqian zhangqianqian, FA 1209001462058 (NAF Oct. 26, 2012) (“the Panel finds that Complainant may bring this claim due to its exclusive licensee status [in relation to watches] with the owner of the MICHAEL KORS mark.”). Leapfrog’s date of first use (through licensees) of the LEAPFROG® trademark for “Audio and video recordings featuring educational matter for infants and children” is at least as early as September 11, 1999, well prior to the unauthorized registration of the Domain Name in 2009.
On or around January 2014, Lionsgate discovered that it had inadvertently allowed the registration of the Domain Name to lapse in 2009 and the Domain Name was subsequently registered by a company called Standard Bearers Enterprises Limited (“Standard Bearers”). To avoid the cost of this proceeding, Lionsgate sent an e-mail and follow-up e-mail to Standard Bearers offering to purchasing the Domain Name back for $1,000. Lionsgate did not receive a response from Standard Bearers.
Lionsgate then discovered that Standard Bearers recently transferred ownership of the Domain Name to Domain Administrator, Fundacion Private Whois (“Fundacion”). Upon information and belief, Fundacion regularly engages in the practice of registering multiple domain names that incorporate the trademarks of third parties.[1]
The Domain Name currently resolves to a website at www.leapfrogdvds.com (“Website”) which has links with various titles such as “DVDS Online” and “Watch DVDS Online for Free.” The Website also has a “Search Ads” feature which allows users to search for various products or services. At the bottom of the Website, it states, “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).” When a user clicks on any one of the titled links, the user is taken to a secondary webpage at www.leapfrogdvds.com, which provides various hyperlinks, by category, to third party websites offering goods and services. By way of example, one of the secondary pages contains third party links to mavshack.com that offers “Free Movies Online for Free” and to amazon.com that offers “Amazon Instant Video.” These third party websites compete with Complainant Lionsgate’s offering of DVDs.
[a.] The Domain
Name is Identical Or Confusingly Similar To A Trademark Or Service Mark In
Which The Complainant Has Rights.
UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The Domain Name is confusingly similar to the federally registered trademark LEAPFROG®, because it wholly incorporates the LEAPFROG® mark and merely inserts the descriptive word “DVDs” and the generic or descriptive top level domain indicator “.com”. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i). It is well established that the whole incorporation of a mark or the mere addition of descriptive wording or .com are not sufficient to negate a finding of an identical or confusingly similar domain name. See, e.g., Omega SA v. Domain Admin, FA1001001302921 (NAF Feb. 24, 2010) (finding Respondent’s <omegawatchstore.com> confusingly similar to Complainant’s OMEGA trademark because “watch store” is a descriptive phrase and “.com” is merely a generic top level domain); Exxon Mobil Corp. v. Internet Administrator, FA 0906001267986 (NAF Jul. 28, 2009) (finding Respondent’s <exxonmobilgiftcard.com> confusingly similar to Complainant’s EXXON MOBIL trademark because “gift card” is a descriptive phrase and “.com” is merely a generic top level domain). Here, the mere addition of the word “DVDs” and the top level domain indicator “.com” to the LEAPFROG® mark is not sufficient to negate the confusing similarity between the <leapfrogdvds.com> domain name.
Further, there is no question that Lionsgate, as the exclusive licensee, has rights to the LEAPFROG® mark. Warner Cable Inc. v. Taiwan – China Entrepreneurs Organization, FA 1207001452714 (NAF Aug. 19, 2012); Fossil, Inc. v. Zhang qianqian / zhangqianqian zhangqianqian, FA 1209001462058 (NAF Oct. 26, 2012).
In short, the Domain Name is confusingly similar to the LEAPFROG® mark.
[b.] The Respondent Has No Rights Or Legitimate Interests In Respect Of The Domain Name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The Respondent has no right to use the LEAPFROG® mark in the <leapfrogdvds.com> domain name. On information and belief, based on a review of the records of the United States Patent and Trademark Office by the undersigned counsel for Lionsgate, Respondent owns no federal trademark or service mark registration for the mark LEAPFROG.
(i.) Respondent has not used and is not using the Domain Name in connection with any bona fide offering of goods or services. ICANN Policy 4(c)(i). As previously stated, the website associated with the Domain Name, located at www.leapfrogdvds.com, resolves to a passive website providing “sponsored listings”, which are hyperlinks to other websites in which Respondent presumably receives “click-through” advertising revenue. Use of Complainant’s licensed trademark in a domain name that resolves to a website that sells or links to competing products does not constitute a bona fide offering of goods and services. Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Beamline c/o Young Nah, FA 0511000592343 (NAF Dec. 27, 2005). In Beamline, the Panel stated, “Respondent is using the [confusingly similar] domain name to redirect Internet users to a website providing links to various nutritional, medical and weight loss sites, many of which sold Complainant's [Herbalife’s] products as well as competing products. The Panel presumes that Respondent receives click-through fees for hosting links to competing websites at the disputed domain name and finds that Respondent's use of a domain name that is confusingly similar to Complainant's [Herbalife’s] mark is not a use in connection with 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).” See also Toyota Motor Sales, U.S.A., Inc. v. Traverito Traverito, FA 0711001112557 (NAF Jan. 2, 2008) (“The <toyotaracing.com> domain name previously resolved to a website having third-party links offering products that sought to compete in the marketplace with Complainant. The Panel finds that such use is not 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).”); Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Derek Atkin d/b/a/ Windsor Consultants, FA 0109000099679 (NAF Oct. 21, 2001) (“Respondent has linked the contested domain names, both of which wholly incorporate Complainants’ mark, to Web sites which have offered hotel services in competition with the services offered by Complainants. This is not a bona fide offering of services.”). There is also no evidence that, prior to this action, Respondent had any intention to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services in the future.
(ii.) On information and belief, Respondent is not commonly known by the name Leapfrog or Leapfrogdvds.
(iii.) Respondent is not making a legitimate noncommercial or fair use of the Domain Name. As stated, the website associated with the Domain Name provides links to websites that advertise third party DVDs or videos and thus compete directly with Lionsgate’s DVDs. It is well-established that such use does not constitute a legitimate noncommercial or fair use.
In order to qualify as a “legitimate noncommercial or fair use” under ICANN Policy 4(c)(iii), Respondent must operate the website corresponding to the domain name “without intent for commercial gain.” Tim Flentye and Flentye Properties v. Lee Street Management c/p Michael Lee, FA 0604000673286 (NAF May 17, 2006); Dell Inc. v. INnervision Web Solutions c/o Domain Registrar, FA 0503000445601 (NAF May 23, 2005). As previously described, the Domain Name resolves to a “sponsored” website that provides links to various websites advertising and selling services that compete with Lionsgate’s DVDs. Respondent must obviously obtain monetary benefit for click-throughs to these websites, since the website expressly states the websites are “sponsored listings.” In short, Respondent is making a commercial use of the Domain Name and does not qualify under ICANN Policy 4(c)(iii).
[c.] The Domain Name Should Be Considered As Having Been Registered And Being Used In Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
(i.) Respondent registered the Domain Name in order to disrupt Lionsgate’s business. ICANN Policy 4(b)(iii). The Domain Name resolves to a website that advertises and promotes goods and services that compete directly with Lionsgate’s goods. Such use evidences bad faith use and registration pursuant to ICANN Policy 4(b)(iii).
(ii.) Respondent’s predecessor-in-interest Fundacion has engaged in a pattern of conduct whereby Fundacion registers domain names in order to prevent trademark owners from reflecting their trademarks in a corresponding domain name. WIPO has recognized Fundacion’s bad faith pattern of conduct. Bossa Studios Limited v. Fundacion Private Whois, D2014-0717 (WIPO Jun. 12, 2014) (“Complainant has also presented evidence that Respondent [Fundacion Private Whois]’s conduct with regard to the Disputed Domain Name is part of a pattern of behavior in which Respondent registers domain names containing well-known trademarks and uses them to prevent the owner of the trademark from registering a domain name with the mark.”). The exact relationship between Respondent Ryan G Foo and Respondent’s predecessor-in-interest Fundacion is unclear, but it is clear that the Website is unchanged in content.
(iii.) Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Lionsgate’s licensed LEAPFROG® mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. ICANN Policy 4(b)(iv). Respondent’s www.leapfrogdvds.com website is intended to attract users trying to find information about Lionsgate’s LEAPFROG® DVDs. Once there, users are instead encouraged to purchase products or services from Lionsgate’s competitors.
Furthermore, Respondent presumably receives “click-through” revenues from displaying and advertising such competitor websites because the website expressly stated that the third party links are “sponsored listings.” Such use constitutes bad faith use and registration pursuant to ICANN Policy ¶ 4(b)(iv). Licorera Zacapaneca S.A. v. James Rawlins, FA 0705000992270 (NAF Jun. 28, 2007) (“As Respondent’s disputed domain name describes in detail Complainant’s products, while also offering them for sale to Internet users, the <ronzacapacentenario.com> domain name is capable of being confused as a domain name and resulting website that is affiliated with or sponsored by Complainant in some manner. Additionally, Respondent is obviously profiting from the disputed domain name as it offers various products for sale. Accordingly, the Panel finds evidence of bad faith registration and use under Policy ¶4(b)(iv).”); Kohler Co. v. Gerald Hertsch, FA 0610000825627 (NAF Dec. 27, 2006) (“Additionally, Respondent’s use will likely cause confusion among Internet users as to Complainant's sponsorship of and affiliation with the resulting websites. The Panel finds that such use of a domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use in accordance with Policy ¶ 4(b)(iv).”).
It is well-established that the four bad faith factors listed in Policy ¶4(b) are not exclusive, and that “the Panel may consider the totality of the circumstances when determining whether a domain name has been registered and used in bad faith.” Diners Club International, Ltd. v Infotechnics Limited, FA 0307000169085 (NAF Jun. 21, 2003). Given Respondent’s lack of legitimate interest in the LEAPFROG® mark and pattern of conduct in registering or registered domain names that incorporate third party trademarks, it is clear that Respondent purchased the Domain Name with the intent of disrupting Lionsgate’s business and the attraction, for commercial gain, of Internet users to Respondent’s website by creating a likelihood of confusion with the LEAPFROG® mark. ICANN Policy 4(a). This constitutes bad faith registration and use of the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 LEAPFROG mark is used in connection with children’s educational entertainment products including audio and video recordings. Complainant has rights in the LEAPFROG mark as the exclusive licensee of the mark for children’s DVDs. The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,635,552 registered Oct. 15, 2002). In Time Warner Cable inc. v. Taiwan – China Entrepreneurs Organization, FA 1452714 (Nat. Arb. Forum Aug. 19, 2012), the panel wrote, “Complainant is the exclusive licensee of the trademark according to a sworn statement accompanying the Complaint. For the purposes of the Policy, the Panel is satisfied that Complainant has trademark rights.” The intellectual property rights to the mark are adequately demonstrated by its registration with the USPTO. Complainant adequately demonstrates its rights under the mark as a licensee of the mark. At this stage of the proceeding, Complainant need not show it has superior rights to Respondent in Chile, but merely that Complainant has SOME rights somewhere. Complainant has adequately demonstrated its rights in the LEAPFROG mark pursuant to Policy ¶4(a)(i).
Complainant claims <leapfrogdvds.com> domain name is confusingly similar to the LEAPFROG mark because it simply adds the descriptive term “dvds,” and the generic top-level domain (“gTLD”) “.com”. Adding a descriptive term to a mark does not normally prevent it from being confusingly similar to a disputed domain name. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Similarly, adding a gTLD to a mark does not adequately distinguish the disputed domain name from the mark (to hold otherwise would eviscerate the UDRP policy). The <leapfrogdvds.com> domain name is confusingly similar to the LEAPFROG mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 <leapfrogdvds.com> name. The current WHOIS lists “Ryan G Foo / PPA Media Services” as the registrant of record. There seems to be no obvious connection between the registrant’s name and the domain name. It seems clear (in the absence of a response) Respondent is not commonly known by the <leapfrogdvds.com> name for purposes of Policy ¶4(c)(ii). See 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).
Complainant claims Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The <leapfrogdvds.com> domain name resolves to a click-through website promoting hyperlinks to other businesses competing with Complainant’s DVD sales. The disputed domain name resolves to promote such links as “DVDS Online,” “LeapFrog Learning Toy,” and “Watch Movies Online for Free.” Using a confusingly similar domain name to promote competing links does not demonstrate rights pursuant to Policy ¶4(c)(i) or (iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. There is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Finally, Respondent registered the disputed domain name using a privacy service. Respondent’s true identity was not revealed until this proceeding was brought. The record owner trustee is not in businesses and does not direct how the disputed domain name is used. The beneficial owner (who controls the contents of the domain name) does not publicly associate itself with the disputed domain name. This means Respondent cannot get any rights from owning the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent and its predecessor-in-interest have a pattern of bad faith. See, e.g., Delta Dental Plans Association v. Ryan G Foo, PPA Media Services / Fundacion Private Whois, D2014-0474 (WIPO June 16, 2014); The American Automobile Association, Inc. v. Ryan G Foo, PPA Media Services / Fundacion Private Whois, D2014-0474 (WIPO Apr. 17, 2014). Prior panels have relied on findings of bad faith in prior UDRP decisions to find bad faith in instant proceedings. This Panel declines to do so, unless Complainant has been prevented from registering its mark as a domain name (a fact Complainant failed to assert).
Respondent’s domain name resolves to links promoting goods in competition with Complainant’s offerings. The domain name resolves to promote links such as, “DVDS Online,” “LeapFrog Learning Toy,” and “Watch Movies Online for Free.” This use disrupts Complainant’s business (especially since Complainant owned the disputed domain name originally and inadvertently let it lapse). Respondent’s use of the disputed domain name to promote links in competition with Complainant demonstrates bad faith use and registration pursuant to Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent likely generates click-through revenue from the links (or at least gets free hosting), and therefore impermissible profits from the confusingly similar domain name in violation of Policy ¶4(b)(iv). Prior panels have found bad faith under similar facts where the respondent used the domain name to generate click-through revenue via competing links. In BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the panel wrote “Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.” This Panel agrees. Respondent has engaged in Policy ¶4(b)(iv) bad faith registration and use of the disputed domain name.
Finally, Respondent registered the disputed domain name using a privacy service. This raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut this presumption. That alone is sufficient grounds to find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <leapfrogdvds.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 20, 2014
[1] After submission of this complaint to the National Arbitration Forum, Fundacion transferred ownership of the Domain Name to Respondent Ryan G Foo. The website associated with the Domain Name remains unchanged in content.
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