Pettigo Comercio Internacional Lda v ****** ***** / study
Claim Number: FA1507001627362
Complainant is Pettigo Comercio Internacional Lda (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, London, United Kingdom. Respondent is ****** ***** / study (“Respondent”), London, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lycamovie.com>, registered with Name.com, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2015; the Forum received payment on July 6, 2015.
On July 6, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <lycamovie.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 July 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@lycamovie.com. Also on July 8, 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 July 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant alleges that it is the owner of the LYCA trademark as registered with the United Kingdom. Attached at Complainant’s Annex 1 is a trademark with the United Kingdom Intellectual Property Office (“UKIPO”) for the LYCA mark owned by Complainant (Registry No. EU004658951, registered Sept. 20, 2006). The mark is used on or in connection with the sale of telecommunication products. While LYCA is the dominant portion of the <lycamovie.com> domain name, it is thus confusingly similar as the addition of the term “movie” and the generic top-level domain (“gTLD”) “.com” fail to detract from the confusing nature evinced.
Respondent has registered the <lycamovie.com> domain name without rights or legitimate interests in such a domain name. In fact, Respondent is not commonly known by the <lycamovie.com> domain name, nor has Respondent been authorized by Complainant to use any variation of the LYCA mark in domain name registrations. Further, Respondent has used the <lycamovie.com> domain name to offer links to competing films, third party online retailers and torrent sites. Such use is not bona fide, nor should it be considered a legitimate noncommercial or fair use as Respondent has in fact asserted that it profits from its use of the domain. See Compl., at Attached Annex 15, p. 9. At Annex 17, Complainant notes that Respondent offers torrents or links to torrent files where Internet users may illegally download content. Complainant also contends that Respondent registered the disputed domain name with actual or constructive knowledge of the LYCA mark and Complainant’s rights in the mark.
Respondent has registered and used the domain name as outlined by elements of Policy ¶ 4(b) and, therefore, in bad faith. First, Respondent offered to sell the <lycamovie.com> domain name on or about October 20, 2014. See Compl., at Attached Annex 15, pp. 9-16. Next, Respondent acts as a directory to direct Internet traffic, presumably for commercial profit. Lastly, Respondent registered and used the disputed domain name with actual or constructive knowledge of the LYCA mark and Complainant’s rights in the mark per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <lycamovie.com> domain name on May 21, 2014.
As the Respondent has failed to file a Response in these proceedings, the Panel shall make its determination based on the undisputed and reasonable facts as alleged by Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has used and registered the disputed 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.”).
Complainant purports to own the LYCA mark based on its registration with the UKIPO. See Compl., at Attached Annex 1 (Reg. No. EU004658951, registered Sept. 20, 2006). This registration satisfies the Panel under Policy ¶ 4(a)(i) that the Complainant has rights in or to the trademark LYCA.
Next, Complainant argues that while LYCA is the dominant portion of the <lycamovie.com> domain name, it is confusingly similar to its trademark as the addition of the term “movie” and the gTLD “.com” fail to distinguish the disputed domain name from the Complainant’s trademark. The Panel agrees and finds the disputed domain name is confusingly similar to the Complainant’s registered trademark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has registered the <lycamovie.com> domain name without rights or legitimate interests. More specifically, Complainant asserts Respondent is not commonly known by the <lycamovie.com> domain name, nor has Respondent been authorized by Complainant to use any variation of the LYCA mark in domain name registrations. Panels have looked to WHOIS information where a respondent has failed to submit a response in an effort to search for rights under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Here, the registrant of record is listed as “****** ***** / study” due to a privacy service used by Respondent. This mere privacy setting does not give Respondent rights or legitimate interests in or to the disputed domain name.
Further, Complainant argues that Respondent has used the <lycamovie.com> domain name to offer links to competing films, third party online retailers and torrent sites. See Compl., at Attached Annex 15. Such use is not bona fide, nor should it be considered legitimate noncommercial or fair use as Respondent asserted that it profits from its use of the domain. Id. at p. 9. At Annex 17, Complainant notes that Respondent offers torrents or links to torrent files where Internet users may illegally download content. Such use does not generate for the Respondent rights or legitimate interests in or to the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Accordingly, Respondent has no rights or legitimate interests in or to the disputed domain name.
Complainant urges Respondent has registered and used the domain in bad faith as outlined by elements of Policy ¶ 4(b). First, Respondent purportedly offered to sell the <lycamovie.com> domain name on or about October 20, 2014. See Compl., at Attached Annex 15, pp. 9-16. Offers for sale by a respondent are indicative of bad faith registration and use in some circumstances. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
In light of the available evidence in the record, the Panel finds that Respondent has acted in violation of Policy ¶ 4(b)(i) and demonstrated its bad faith registration and use of the disputed domain name.
Next, Complainant asserts that Respondent acts as a directory to direct Internet traffic, presumably for commercial profit. Attached Annex 15 clearly demonstrates Respondents intent. Therefore, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the LYCA mark. Complainant argues that Respondent's offering of competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel finds this to be a reasonable conclusion based on the totality of the circumstances.
Therefore, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <lycamovie.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: August 2, 2015
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