Wiluna Holdings, LLC v. Transcom Ltd.
Claim Number: FA1504001614056
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John P. Sullivan of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Transcom Ltd. (“Respondent”), Guernsey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <lips4sale.com>, registered with Nettuner Corp. Dba Webmasters.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 10, 2015; the Forum received payment on April 10, 2015.
On April 14, 2015, Nettuner Corp. Dba Webmasters.Com confirmed by e-mail to the Forum that the <lips4sale.com> domain name is registered with Nettuner Corp. Dba Webmasters.Com and that Respondent is the current registrant of the name. Nettuner Corp. Dba Webmasters.Com has verified that Respondent is bound by the Nettuner Corp. Dba Webmasters.Com 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 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@lips4sale.com. Also on April 22, 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 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant
1. THE INFRINGING DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO WILUNA’S CLIPS4SALE AND CLIPS4SALE.COM MARKS
Respondent’s Infringing Domain Name wholly incorporates a variation of Wiluna’s CLIPS4SALE and CLIPS4SALE.COM Marks, and the CLIPS4SALE.COM domain name, and is therefore nearly identical to and confusingly similar to Wiluna’s CLIPS4SALE and CLIPS4SALE.COM Marks. Moreover, Respondent is using the Infringing Domain Name to operate websites and/ or redirect Internet users to websites offering goods and/or services in the adult media industry identical or virtually identical to those offered by Wiluna under the CLIPS4SALE and CLIPS4SALE.COM Marks. Internet users will be led to believe that the Infringing Domain Name, and the site operated under or otherwise related to the domain name, is associated or affiliated with, or sponsored or endorsed by Wiluna, when in fact it is not. The Infringing Domain Name is therefore acting as the equivalent of Wiluna’s CLIPS4SALE and CLIPS4SALE.COM Marks.
2. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN THE INFRINGING DOMAIN NAME.
The use of a domain name, which from its outset is infringing on the trademark rights of another, can never be considered legitimate. It has been widely recognized in domain names disputes that the registration of an infringing domain name is not a legitimate use under the UDRP. See Integrated Management Solutions, Inc. v. AMMG, Inc., FA 105215 (NAF, April 11, 2002); Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO, April 18, 2000) (concluding the use of a domain name incorporating another’s trademark to direct users to a competing website is not a legitimate use); Chanel, Inc. v. Estco Tech. Group, D2000-0413 (WIPO, September 18, 2000) (recognizing that under the policy a legitimate use of a domain name must be non-infringing use); Renaissance Hotel Holdings, Inc. v. The Renaissance Cochin, Claim Number: FA0703000932344 (NAF April 23, 2007) (appropriating a Complainant’s mark to profit from it is not a bona fide offering of goods or services, and is not a legitimate use).
3. RESPONDENT REGISTERED AND IS USING THE INFRINGING DOMAIN NAME IN BAD FAITH
The ICANN Policy includes four circumstances, without limitation, that are to be considered evidence of the registration and use of a domain name in bad faith. Based upon the facts set forth in this Complaint, the third and fourth circumstances are most applicable. Pursuant to ICANN Policy 4 (b) (iii) and (iv), evidence of bad faith includes registering a “domain name primarily for the purpose of disrupting the business of a competitor” and an intentional attempt by Respondent to “attract, for commercial gain, Internet users to its web site . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on Respondent’s web site or location.” Respondent has clearly intended to capitalize upon the goodwill associated with Wiluna’s established CLIPS4SALE and CLIPS4SALE.COM Marks, and this conduct falls squarely within the conduct described in ICANN Policy 4 (b) (iii) and (iv).
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <lips4sale.com> domain name is confusingly similar to Complainant’s CLIPS4SALE marks.
2. Respondent does not have any rights or legitimate interests in the <lips4sale.com> domain name.
3. Respondent registered or used the <lips4sale.com> 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.”).
Respondent has taken Wiluna’s established Marks and Domain Name, and has merely deleted the letter “c” from the beginning of the word “clips” in the domain name.
As previous UDRP Panels have recognized, the addition of a term to an established trademark or domain name or a minor modification or misspelling creates a confusingly similar domain name. See U-Haul International, Inc. v. ALCorp. N.A., Claim Number: FA0209000124739 (NAF November 4, 2002) (the fact that a domain name incorporates a Complainant’s mark “…is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”) (and cases cited therein);Yahoo! Inc. v. Hangzhou Hi2000 InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd, Claim Number: FA0301000141825 (N.A.F. February 26, 2003) (<chemyahoo.com>, <chemicalyahoo.com>, <packyahoo.com>, <pharmyahoo.com>, <texyahoo.com>, <textileyahoo.com> and <yahoochem.com>- "it is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark"); Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), Case No. D2002-0367 (WIPO July 8, 2002); (experianautomotive.com - addition of the generic term, 'automotive,' does not distinguish Respondent's domain name from Complainant's mark because the domain contains Complainant’s EXPERIAN mark in its entirety); Renaissance Hotel Holdings, Inc. v. The Renaissance Cochin, Claim Number: FA0703000932344 (NAF April 23, 2007) (addition of geographic term to Complainant’s trademark creates confusingly similar domain name).
Further, the mere deletion of the letter “c” from the beginning of the word “clips” as found in Wiluna’s Marks (e.g., the infringing LIPS4SALE.COM domain name) is not considered as creating a distinct mark capable of overcoming a claim of confusing similarity. See Victoria’s Secret v. Zuccarini, Claim Number: FA0010000095762 (NAF Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA FA00040000994454 (NAF May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).
As stated in Technology Properties, Inc. v. Personal, Claim Number: FA96569 (NAF, March 26, 2001):
Offering bona fide services or products in connection with a website is evidence of rights and legitimate interests in the domain name. Policy ¶ 4(c)(i). However, offering services or products, via a confusingly similar domain name, that are comparable to the products and services of the trademark owner, is not a bona fide use of the domain name. See America Online, Inc. v. Xianfeng Fu, D2000- 1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”). As such, Respondent’s above described use of the domain name is not evidence of rights or legitimate
interests in the domain name. Thus, Policy ¶ 4(a)(ii) has been satisfied. [Emphasis supplied.]
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.”).
See also, Underground Services, Inc. v CSS Group, LLC, Claim Number: FA96843 (NAF, April 27, 2001) (“Legitimate rights and interests do not accrue to the Respondent by way of trademark infringement.). Allowing Respondent to retain the Infringing Domain Name would do nothing more than reward infringement.
Respondent’s confusingly similar variation of Wiluna’s CLIPS4SALE Marks is a blatant attempt to trade on the goodwill established by Wiluna. Consumers or potential consumers of Wiluna’s services or media, when searching the internet, will be directed to Respondent’s Infringing Domain Name, and then redirected to related websites containing adult entertainment media and content in direct competition with services offered by Complainant under the CLIPS4SALE Marks. However, Respondent has no connection or affiliation with Wiluna and does not have a license or consent, express or implied, to use the CLIPS4SALE Mark in a domain name or in any other manner.
Additionally, Respondent’s redirection of the infringing domain name LIPS4SALE.COM to other websites featuring adult entertainment media and content, such as ADULTVIDEOS.COM, is calculated to earn a profit from each diverted Internet user. See Thrifty, Inc. v. Music Wave, FA0210000128672 (Nat. Arb. Forum Dec. 9, 2002)(concluding that Respondent’s redirection of the disputed domain name to pornographic websites was performed to earn a profit from diverted Internet traffic and Respondent did not have rights or legitimate interests in the domain name at issue). This type of activity is not a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Alta Vista v. Krotov, D2000- 1091 (WIPO Oct. 25, 2000)(finding that use of a domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Respondent was not commonly known by the disputed domain name prior to its actual knowledge of Wiluna’s rights. The inference is one of diversion of Internet traffic, not legitimate use. See Integrated Management Solutions, Inc. v. AMMG, Inc.; North Coast Med, Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000); Vapor Blast Mfg. Co. v. R & S Tech, Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001); The Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites) and Klosmea Pty. Ltd. v. Krpan, D2000- 0948 (WIPO Oct. 3, 2000) (“...the current use of the Domain Name is a thinly veiled attempt to attract, for commercial gain, persons aware of the Complainant’s products to the Respondent’s site by creating a likelihood of confusion with the Complainant’s Mark...).
Moreover, Respondent cannot rely on the fact that it was able to register the Infringing Domain Name as somehow legitimizing its infringement. As stated in TRW Inc. v. Autoscan Inc., D2000-0156 (WIPO, April 24, 2000), “If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration.”
Respondent’s registration of its infringing variation of the CLIPS4SALE and CLIPS4SALE.COM Marks, and the CLIPS4SALE.COM domain name, has no legitimate, non-infringing purpose.
Respondent registered a variation of Wiluna’s coined CLIPS4SALE and CLIPS4SALE.COM Marks. Respondent’s deliberate and intentional copying of Wiluna’s CLIPS4SALE and CLIPS4SALE.COM Marks also demonstrates the strong secondary meaning in those Marks. See, e.g., DreamWorks L.L.C. v. Grantics, Case No. D2000-1269 (WIPO December 16, 2000), citing Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989) ('proof of copying strongly supports an inference of secondary meaning;' secondary meaning found based on plaintiff's extensive use and defendant's 'deliberate and close imitation' of mark); Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1182 n.13 (7th Cir. 1989) (proof of intentional copying is probative evidence of "secondary meaning"' and secondary meaning found where defendant intentionally copied plaintiff's trade dress); see also Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1016 (9th Cir. 1986)("Proof of exact copying, without any opposing proof, can be sufficient to establish secondary meaning"); RJR Foods, Inc. v. White Rocks Corp., 603 F.2d 1058 (2d Cir. 1979)(defendant's intentional copying constitutes evidence of secondary meaning).
Respondent’s infringing domain name is being used by Respondent to redirect Internet users to other websites containing adult entertainment media and content and thus serves as a portal for Respondent’s infringement. Numerous panels have held that using a domain name confusingly similar to a complainant’s mark to link to the competitor’s website constitutes “bad faith” under the Policy. See, e.g. Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 (February 1, 2002) (“[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (“[R]egistration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of . . . a company which directly competes with the Complainant, constitutes bad faith registration and use.”); Zwack Unicom Ltd v. Duna, WIPO Case No. D2000-0037 (March 10, 2000) (respondent’s linking to complainant’s competitor held to constitute bad faith); Oly Holigan, L.P. v. Private, Case No. FA0011000095940 (N.A.F. December 4, 2000) (finding bad faith where respondent used the disputed domain name to “redirect[] the Complainant’s consumers and potential consumers to commercial websites which are not affiliated with Complainant”); Marriott International, Inc. v. Kyznetsov, Case No. FA0009000095648 (N.A.F. October 24, 2000) (finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”). Here, a review of the website that Respondent’s infringing domain name redirects Internet users to, namely, ADULTVIDEOS.COM, clearly demonstrates that Respondent is using the LIPS4SALE.COM domain name to divert Internet users to an adult themed website displaying graphic photographs and video clips of men and women and targeted to the same customers as Wiluna.
In light of the foregoing, the Panel finds that Respondent has both registered and used the Infringing Domain Name in 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 <lips4sale.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 1, 2015
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