URS FINAL DETERMINATION

 

AMC Film Holdings LLC v. WhoisGuard, Inc. et al.

Claim Number: FA1512001652178

 

DOMAIN NAME

«intothebadlands.xyz»

 

PARTIES

Complainant: AMC Film Holdings LLC of New York, New York, United States of America.

Complainant Representative: Fross Zelnick Lehrman & Zissu, P.C. of New York, New York, United States of America.

 

Respondent: Timothy Defeo  of Millville, New Jersey, United States of America.

 

AMC Film Holdings LLC of New York, New York, United States of America.

Complainant Representative: Fross Zelnick Lehrman & Zissu, PC of New York, New York, United States of America.

 

Tim Defeo of , United States of America.

 

WhoisGuard, Inc. of Panama, Panama, International, PA.

 

REGISTRIES and REGISTRARS

Registries: XYZ.COM LLC

Registrars: NameCheap, Inc.

 

EXAMINER

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.

 

Fernando Triana, Esq., as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: December 14, 2015

Commencement: January 18, 2016     

Response Date: December 18, 2015

 

Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure  Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .

 

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

 

STANDARD OF REVIEW

Clear and convincing evidence.

 

FINDINGS and DISCUSSION

 

1.    Complainant owns the trademark INTO THE BADLANDS, in Benelux, with registration No. 0976871 within international class 41, to identify: “Fan club services; television entertainment; entertainment services in the nature of an on-going fictional dramatic television series; distribution of television programs; syndication of television programs; providing information about a television series via an on-line global computer network; providing online computer games; arranging entertainment competitions; providing online electronic publications (not downloadable); publication of books; publication of books on- line; movie studios; movie theatre presentations; game services provided on-line from a computer network; radio and television production services; theatre productions; arranging and conducting competitions; education; providing of training; entertainment; sporting and cultural activities”.

 

2.    Respondent knew or should have known of the trademark registration INTO THE BADLANDS.

 

3.    Respondent has never been commonly known by the disputed domain name or the trademark INTO THE BADLANDS.

 

4.    Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.

 

As per the Paragraph 9 (c) of the URS Rules, the Examiner will determine in which language to issue its Determination. Taking into account that Complainant submitted the Complaint in English and that Respondent filed its Response in the same language, the Examiner will decide in English.

 

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.

 

Identical and/or Confusingly Similar

 

Concerning the first element, Paragraph 1.2.6.1., of the URS Procedure introduces that to obtain an order to suspend a domain name; the disputed domain name should be identical or confusingly similar to a word mark:

 

(i)            for which Complainant holds a valid national or regional registration and that is in current use; or

(ii)          that has been validated through court proceedings; or

(iii)         that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

 

Furthermore, the use of said trademark could be shown by:

 

a.         Demonstrating evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse.

 

b.         Providing a sample of use submitted directly with the URS Complaint”.

 

a)     Existence of a trademark in which the Complainant has rights and is in current use

 

Complainant proved its rights on the trademark INTO THE BADLANDS, which is registered before the Benelux Trademark Office, since June 15, 2015, to identify services within international class 41.

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the corresponding services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[1].

 

Furthermore, Complainant filed evidence of use by means of an specimen of current use in commerce.

 

Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is in current use for purposes of Paragraph 1.2.6.1.(i), of the URS Procedure.

 

b)   Identity or confusing similarity between the disputed domain name and the Complainant’s trademark

 

The Examiner considers that the reproduction of the trademark INTO THE BADLANDS, by the disputed domain name «intothebadlands.xyz», is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[2]. Specially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the watch manufacturer.

 

Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

 

In consequence, as per this reasoning, the Examiner finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph 1.2.6.1., of the URS Procedure is duly complied with.

 

Registration and Use in Bad Faith

 

Paragraph 1.2.6.3., of the URS Procedure, includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:

 

a.    Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or

 

b.    Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

c.    Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

 

d.    By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on that web site or location.

 

Complainant asserts that the disputed domain name was registered eight days after the U.S. premier of the television series called: INTO THE BADLANDS. Hence, Respondent must be aware of the trademark extensive use. Furthermore, the trademark was registered before the Trademark Clearinghouse, consequently, when Respondent attempted to register the disputed domain name, Respondent received “warning notice”, which was disregarded.

 

Given the evidence, the Examiner considers that Respondent must have known the trademark INTO THE BADLANDS at the time of the disputed domain name’s registration.  Evidence of such knowledge is the disputed domain name itself:  INTO THE BADLANDS, since INTO THE BADLANDS is neither generic nor descriptive, and it is not a coincidence that Respondent selected the trademark INTO THE BADLANDS to include it in the disputed domain name.

 

Thus, in the Examiner’s view, Respondent deliberately took someone else’s trademark to register a domain name. The Examiner believes that the mere fact of knowingly using a third-party’s trademark in a domain name is registration in bad faith[3].

 

In addition, the Examiner believes that registration of a domain name in bad faith necessarily leads to its use in bad faith. Thus it is irrelevant whether Respondent is actively or passively using the disputed domain name; said use whatever its nature can only be deemed in bad faith. Thus, the Examiner concludes that Respondent is using the disputed domain name «intothebadlands.xyz» in bad faith.

 

Thus, the Examiner concludes that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business.

 

Furthermore, Respondent’s use of the disputed domain name does not fall into the category of bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name and the use made of the disputed domain name misleads divert consumers.

 

As per this reasoning, the Examiner finds that, in the present case, the disputed domain name was registered and is being used in bad faith, thus, the requirement set forth in Paragraph 1.2.6.3., of the URS Procedure is duly complied with.

 

Rights or Legitimate Interests

 

Paragraph 8.3 of the URS Procedure explains the extent of the second element as established in Paragraph 1.2.6.2., of the URS Procedure which is that Registrant has no legitimate right or interest to the disputed domain name. In a URS procedure, Complainant’s burden of proof regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, is limited present adequate evidence to substantiate Complainant’s trademark rights in the disputed domain name, such as, evidence of a trademark registration and evidence that the disputed domain name was registered and is being used in bad faith in violation of the URS.

 

As per the URS requirements, Complainant’s burden of proof has been met, regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, as Complainant has successfully shown evidence to substantiate its trademark rights, such as, the trademark registration INTO THE BADLANDS before the Benelux Trademark Office.

 

Moreover, as established in Paragraph 8.3 of the URS Procedure, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith in violation of the URS, as studied and shown before.

 

Finally, Complainant asserts that Respondent is not commonly known by the disputed domain name and that Complainant has not licensed or otherwise permitted Respondent to use the trademark INTO THE BADLANDS.

 

Consequently, the Examiner finds that, in the present case, Respondent has no legitimate right or interest to the disputed domain name, thus, the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.

 

FINDING OF ABUSE  or MATERIAL FALSEHOOD

The Examiner finds that the Complaint was neither abusive nor contained material falsehoods.

 

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the domain name «intothebadlands.xyz» be SUSPENDED for the duration of the registration. 

 

 

Fernando Triana, Esq., Examiner

Dated:  January 18, 2016



[1] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).

[2] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).

[3] See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel held:  The selection of this word is certainly not a random decision:  the Panel finds that it is a consequence of Respondents prior knowledge of the mark.  This fact, by itself, is registration in bad faith in the Panels opinion.

 

 

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