American Cheerleader Media, LLC. v. ilir shoshi / cheer
Claim Number: FA1411001592319
Complainant is American Cheerleader Media, LLC. (“Complainant”), represented by Arlana S. Cohen of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is ilir shoshi / cheer (“Respondent”), Albania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americancheerleader.us>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2014; the National Arbitration Forum received payment on November 26, 2014.
On December 1, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <americancheerleader.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@americancheerleader.us. Also on December 5, 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 January 6, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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
1. Complainant owns the trademark registration for AMERICAN CHEERLEADER with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,0160,49, registered Nov. 12, 1996). Complainant uses the mark for magazines in the field of cheerleading. The <americancheerleader.us> domain name is virtually identical to the AMERICAN CHEERLEADER mark as the domain name merely removes the space between the two-word mark and affixes the country-code top-level domain (“ccTLD”) “.us.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Prior to the registration of this domain name, there was no indication that Respondent was commonly known by the disputed domain name. Further, Respondent is not authorized by Complainant to use the mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant. The disputed domain name resolves to a website that utilizes a logo and stylized font identical to Complainant’s own and promotes content that relates to Complainant’s goods and services. The resolving page features Complainant’s copyrighted images and text, which is used without Complainant’s authorization. The website also features third-party links, from which Respondent likely obtains referral fees.
3. Respondent registered or used the disputed domain name in bad faith. Respondent is using the disputed domain name to attract users to Respondent’s own website for financial gain. Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant. Respondent monetizes the resulting confusion through pay-per-click links to third-parties. Respondent registered the disputed domain name with actual knowledge of Complainant and its AMERICAN CHEERLEADER mark. Such knowledge can be inferred from Respondent’s efforts to impersonate Complainant’s own branding.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is American Cheerleader Media, LLC of New York, NY, USA. Complainant is the owner of a domestic registration for the mark AMERICAN CHEERLEADER, which it has used continuously since at least as early as 1996 in connection with the sale of its namesake magazine and cheerleading related services.
Respondent is Ilir Shoshi / Cheer, of Tirane, Albania. Respondent’s registrar’s address is listed as Scottsdale, AZ. Respondent registered the disputed domain name on or about March 5, 2013.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 uses AMERICAN CHEERLEADER for magazines in the field of cheerleading. Complainant claims to own the trademark registration for AMERICAN CHEERLEADER with the USPTO (Reg. No. 2,0160,49, registered Nov. 12, 1996). Prior panels have determined that USPTO registration sufficiently demonstrates a complainant’s rights in the mark even if the respondent resides outside of the United States. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under [UDRP] ¶4(a)(i), despite the fact Respondent resides outside of the United States.”). The Panel here finds that Complainant’s valid trademark registration with the USPTO demonstrates its rights in the AMERICAN CHEERLEADER mark for purposes of Policy ¶ 4(a)(i).
Complainant next claims that the <americancheerleader.us> domain name is virtually identical to the AMERICAN CHEERLEADER mark as the domain name merely removes the space between the two-word mark and affixes the ccTLD “.us.” Prior panels have concluded that both the affixation of a ccTLD and the omission of spacing are irrelevant to the confusing similarity analysis as all domain names require some TLD and spacing is not replicable in domain names. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Nat. Arb. Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel here finds that the <americancheerleader.us> domain name is effectively identical to the AMERICAN CHEERLEADER mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has failed to provide any explanation for the registration. Complainant further asserts that there is no indication that Respondent is commonly known by the disputed domain name. Complainant also states that Respondent is not authorized by Complainant to use the mark. The Panel notes that the WHOIS record identifies “ilir shoshi/cheer” as registrant. Given the Respondent’s lack of a response the Panel finds that Respondent has no demonstrable rights in any trademark so as to satisfy Policy ¶ 4(c)(i) and that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also 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).
In addition, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Complainant claims that Respondent uses the disputed domain name to feature cheerleading-related content and promote third-party links, from which Respondent obtains referral fees. The Panel notes that the disputed domain resolves to promote advertisements and links such as “Quality Batting Cages,” “Upgrade Your Mattress Now,” and “Compare Ford® Escape.” Complainant further asserts that Respondent attempts to pass itself off as Complainant through the disputed domain name. Complainant explains that the disputed domain name resolves to a website that utilizes a logo and stylized font identical to Complainant’s own and promotes content that relates to Complainant’s goods and services. The Panel notes the comparison of screenshots of Respondent’s website with Complainant’s website and Complainant’s assertion that Respondent generates click-through revenue from the promoted links integrated in its cheer-based website mirroring Complainant’s own website in content and design. As such the Panel finds Respondent is not using the <americancheerleader.us> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to [UDRP] ¶ 4(a)(ii)); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent is using the disputed domain name to attract users to Respondent’s own website for financial gain. Complainant claims that Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant. Complainant presumes that Respondent monetizes the resulting confusion through pay-per-click links to third-parties. Prior panels have determined that such conduct falls within the auspices of Policy ¶ 4(b)(iv). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv)). The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as Respondent’s resolving website monetizes Internet traffic while promoting the protected content and imagery of Complainant.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <americancheerleader.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 20, 2015
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