IMDB.COM, INC. v armin n.s / Netafraz Hosting
Claim Number: FA1410001582698
Complainant is IMDB.COM, INC. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is armin n.s / Netafraz Hosting (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <imdb-dl114.com>, <imdb-dl115.com>, <imdb-dl116.com>, <imdb-dl117.com>, <imdb-dl118.com>, <imdb-dl119.com>, <imdb-dl120.com>, and <pay-imdb-dl.com>, registered with Onlinenic Inc.
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 October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 3, 2014, Onlinenic Inc confirmed by e-mail to the National Arbitration Forum that the <imdb-dl114.com>, <imdb-dl115.com>, <imdb-dl116.com>, <imdb-dl117.com>, <imdb-dl118.com>, <imdb-dl119.com>, <imdb-dl120.com>, and <pay-imdb-dl.com> domain names are registered with Onlinenic Inc and that Respondent is the current registrant of the names. Onlinenic Inc has verified that Respondent is bound by the Onlinenic Inc 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 October 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@imdb-dl114.com, postmaster@imdb-dl115.com, postmaster@imdb-dl116.com, postmaster@imdb-dl117.com, postmaster@imdb-dl118.com, postmaster@imdb-dl119.com, postmaster@imdb-dl120.com, and postmaster@pay-imdb-dl.com. Also on October 3, 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 30, 2014, 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. 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 uses the IMDB mark to designate its database and information archive for an array of film and movie-related persons and topics. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,609,882, registered Aug. 20, 2002). Respondent’s domain names are confusingly similar to the IMDB mark under Policy ¶ 4(a)(i). Respondent’s domain names take the IMDB mark and add on the generic top-level domain (“gTLD”) “.com” along with a string of numbers with a hyphen, or in the case of <pay-imdb-dl.com>, hyphens and the generic terms “pay” and “dl” (download).
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the disputed domain names. The WHOIS information shows the registrant as “armin n.s / Netafraz Hosting.” Complainant has not authorized Respondent’s use of the IMDB mark in Internet domain names. Further, Respondent is using all of the domain names to mimic and imitate Complainant’s websites in offering Respondent’s independent downloads. Complainant believes that malware is being distributed through these websites. Respondent has failed to create active websites for the <imdb-dl119.com>, and <imdb-dl120.com> domain names.
Respondent registered and uses the disputed domain names in bad faith. Respondent’s use of the domain names is disruptive of Complainant’s commercial operations under the IMDB mark. The use of deceptively similar websites on the active domain names <imdb-dl114.com>, <imdb-dl115.com>, <imdb-dl116.com>, <imdb-dl117.com>, and <imdb-dl118.com> is suggestive of a likelihood of confusion. Respondent is using all of the domain names in an attempt to pass itself off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, IMDB.COM, INC., uses the IMDB mark to designate its database and information archive for an array of film and movie-related persons and topics. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,609,882, registered Aug. 20, 2002).
Respondent, armin n.s / Netafraz Hosting, registered the disputed domain names in 2014. Respondent is using all of the domain names to mimic and imitate Complainant’s websites in offering Respondent’s independent downloads.
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 has rights in the IMDB mark under Policy ¶ 4(a)(i) through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,609,882, registered Aug. 20, 2002). See, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s domain names are confusingly similar Complainant’s IMDB mark under Policy ¶ 4(a)(i). The domain names take the IMDB mark and the gTLD “.com” along with a string of numbers with a hyphen, or in the case of <pay-imdb-dl.com>, hyphens and the generic terms “pay” and “dl” (download). Neither hyphens nor the gTLD are relevant under the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Neither random numerals nor generic terms avoid a finding of confusing similarity when coupled with the distinctive IMDB mark. See, e.g., Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the 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).
Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii). The WHOIS information shows the registrant as “armin n.s / Netafraz Hosting.” Complainant has not authorized Respondent’s use of the IMDB mark in Internet domain names. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent is using some of the domain names to mimic and imitate Complainant’s websites in offering Respondent’s independent downloads. Respondent’s use of Complainant’s marks and trade dress in promoting a competing service is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See, e.g., Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant believes that malware is being distributed through these websites. Complainant’s Exhibit F shows a warning from Complainant’s computer of malicious software attempting to download from the domain name’s website. Use of a domain name to distribute malicious software deprives Respondent of any right in the <imdb-dl114.com>, <imdb-dl115.com>, <imdb-dl116.com>, <imdb-dl117.com>, and <imdb-dl118.com> domain names that resolve to this content. See, e.g., Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Respondent has failed to create active websites for the <imdb-dl119.com>, <pay-imdb-dl.com>, and <imdb-dl120.com> domain names. Therefore, Respondent does not provide a bona fide offering or legitimate noncommercial or fair use through the domain names under Policy ¶¶ 4(c)(i), (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent’s use of the domain names is disruptive of Complainant’s commercial operations under the IMDB mark. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (hosting a competing and similar service on a disputed domain name created an inference for Policy ¶ 4(b)(iii) bad faith through commercial disruption).
Respondent’s use of deceptively similar websites on the active domain names <imdb-dl114.com>, <imdb-dl115.com>, <imdb-dl116.com>, <imdb-dl117.com>, and <imdb-dl118.com> is suggestive of a likelihood of confusion with intent to commercially benefit. Therefore, Respondent registered and uses these domain names in Policy ¶ 4(b)(iv) bad faith. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Respondent is using all of the domain names in an attempt to pass itself off as Complainant. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Given the use of Complainant’s own marks and logos in the content of the websites, the Respondent registered and uses the disputed domain names with actual knowledge of Complainant’s rights. As such Respondent has registered and uses all of the domain names in Policy ¶ 4(a)(iii) bad faith. See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (finding actual knowledge and Policy ¶ 4(a)(iii) bad faith through the name used for the domain and the use made of it).
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 <imdb-dl114.com>, <imdb-dl115.com>, <imdb-dl116.com>, <imdb-dl117.com>, <imdb-dl118.com>, <imdb-dl119.com>, <imdb-dl120.com>, and <pay-imdb-dl.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 13, 2014
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