Sundance Enterprises, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1503001611636
Complainant is Sundance Enterprises, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sundance-catalog.com> and <sundancecatalogue.com>, registered with Internet.Bs Corp.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2015; the Forum received payment on March 26, 2015.
On April 1, 2015, Internet.Bs Corp. confirmed by e-mail to the Forum that the <sundance-catalog.com> and <sundancecatalogue.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. 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 April 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2015 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@sundance-catalog.com, postmaster@sundancecatalogue.com. Also on April 7, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns the SUNDANCE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.1, 761,813, registered March 30, 1993). Complainant uses the SUNDANCE mark in connection with its mail order services, which offers general merchandise to its customers, including furniture, art, jewelry, and clothing. The <sundance-catalog.com> and <sundancecatalogue.com> domain names are confusingly similar to Complainant’s SUNDANCE mark. The <sundance-catalog.com> domain name includes Complainant’s mark in full, adds a hyphen, inserts the word “catalog,” which directly describes Complainant’s business, and adds the generic top-level domain (“gTLD”) “.com.” The <sundancecatalogue.com> domain name includes Complainant’s mark in full, adds the word “catalogue,” which directly describes Complainant’s business, and adds the gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. Further, Respondent lacks rights or legitimate interests in the <sundance-catalog.com> and <sundancecatalogue.com> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names feature competing hyperlinks on the resolving websites, diverting Internet users who are seeking Complainant’s website. See Compl., at Attached Ex. H.
Respondent has engaged in bad faith registration and use of the <sundance-catalog.com> and <sundancecatalogue.com> domain names. Respondent has listed the <sundance-catalog.com> domain name for sale, which constitutes evidence of bad faith. Additionally, Respondent is a “serial cybersquatter” and has multiple prior UDRP decisions that resulted in a finding of bad faith or transfer. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides mail order services which offer general merchandise to its customers, including furniture, art, jewelry, and clothing.
2. Complainant owns the SUNDANCE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.1,761,813, registered March 30, 1993).
3. Respondent registered the <sundance-catalog.com> domain name on October 13, 2004 and the <sundancecatalogue.com> domain name on or about August 23, 2000. The domain names resolve to websites that feature competing hyperlinks, diverting Internet users who are seeking Complainant’s website.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends that it owns the SUNDANCE mark through its registration with the USPTO (e.g., Reg. No.1, 761,813, registered March 30, 1993). Complainant states that it uses the SUNDANCE mark in connection with its mail order services, which offers general merchandise to its customers, including furniture, art, jewelry, and clothing. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, even though Respondent reportedly resides in Chile, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s SUNDANCE mark. Complainant argues that the <sundance-catalog.com> and <sundancecatalogue.com> domain names are confusingly similar to Complainant’s SUNDANCE mark. The <sundance-catalog.com> domain name includes Complainant’s mark in full, adds a hyphen, inserts the word “catalog,” which directly describes Complainant’s business, and adds the gTLD “.com.” The <sundancecatalogue.com> domain name includes Complainant’s mark in full, adds the word “catalogue,” which directly describes Complainant’s business, and adds the gTLD “.com.” Previous panels have found that the addition of a generic word or term does little to distinguish a disputed domain name from a registered mark, particularly when the chosen word describes a complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). In the present case, a prominent activity of Complainant is the provision of catalogues to promote its goods and services. Past panels have also found that the addition of punctuation, such as a hyphen, does little to differentiate the disputed domain name. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Finally, prior panels have consistently found that the addition of a gTLD does not negate confusing similarity. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds the <sundance-catalog.com> and <sundancecatalogue.com> domain names are confusingly similar to the SUNDANCE mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SUNDANCE
trademark and to use it in its domain names, adding a hyphen and the generic word “catalog” and the generic word “catalogue” respectively;
(b) Respondent uses the disputed domain names to resolve to websites displaying pay-per-click links promoting products that compete with Complainant. These links divert potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant urges that Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. The Panel notes that the WHOIS information for the disputed domain names lists “Ryan G. Foo / PPA Media Services” as the registrant of record. See Compl., at Attached Ex. I. Further, Complainant contends that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant argues that Respondent lacks rights or legitimate interests in the <sundance-catalog.com> and <sundancecatalogue.com> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. According to Complainant, Respondent’s disputed domain names feature competing hyperlinks on its resolving websites, diverting Internet users who are seeking Complainant’s website. See Compl., at Attached Ex. H. The Panel notes that users might click on hyperlinks including “Home Goods” and “Wholesale Jewelry.” Some of these links redirect users to competing retailers. Prior panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel concludes that Respondent’s actions here are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further agrees that as Respondent here presumably attempts to profit through click-through fees, it cannot reasonably follow that Respondent provides a “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent has listed the <sundance-catalog.com> domain name for sale, which constitutes evidence of bad faith registration. See Compl., at Attached Ex. I. Prior panels have found that respondents demonstrate bad faith registration when they make a general offer to sell a disputed domain name. 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).”). Therefore, this Panel finds bad faith registration and use of the <sundance-catalog.com> domain name under Policy ¶ 4(b)(i).
Secondly, Complainant asserts that Respondent is a “serial cybersquatter” and has multiple prior UDRP decisions against it that resulted in a finding of bad faith or transfer. The Panel notes that Complainant has provided evidence of Respondent’s prior UDRP cases held against it in. See Complainant’s Attached Exhibit N. See Zillow, Inc. v. Iryan G Foo / PPA Media Services, FA 1604451 (Nat. Arb. Forum March 19, 2015); Capital One Financial Corp.. v. Ryan G Foo / PPA Media Services, FA 1598555 (Nat. Arb. Forum Feb. 16, 2015). Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence to establish a respondent’s bad faith registration and use. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Thus, the Panel finds that Respondent’s pattern of bad faith registrations demonstrates bad faith registration and use under Policy ¶ 4(b)(ii).
Thirdly, Complainant contends that Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant asserts that Respondent uses pay-per-click hyperlinks on the resolving websites, which redirect users to various third-party websites. Internet users may reach websites such as <zulily.com> and <wayfair.com>, Complainant’s competitors, by clicking on these links. See Compl., at Attached Ex. H. Previous panels have found that the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under 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).”). Thus the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Fourthly, Complainant argues that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives “click through” fees through the use of its disputed domain names, and registered the disputed domain names to attract and mislead consumers for its own profit. Prior panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SUNDANCE mark and its use of them since the registration, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sundance-catalog.com>, <sundancecatalogue.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: May 7, 2015
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