Quality Nonsense Limited v. JERRY SANDUSKY
Claim Number: FA1604001668646
Complainant is Quality Nonsense Limited (“Complainant”), represented by Richard Barnett of Hansel Henson Limited, United Kingdom. Respondent is JERRY SANDUSKY (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <whoishostingthisblog.com> and <whoishostingthis-blog.com>, registered with eNom, Inc.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2016; the Forum received payment on April 4, 2016.
On April 5, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <whoishostingthisblog.com> and <whoishostingthis-blog.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2016 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@whoishostingthisblog.com, postmaster@whoishostingthis-blog.com. Also on April 7, 2016, 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 April 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses its WHOISHOSTINGTHIS mark to offer reviews, web hosting price comparison, online tools, a “Whois” search facility, and other webmaster guides. Complainant owns common law rights in the mark that predate Respondent’s registration of the disputed domain names. The <whoishostingthisblog.com> and <whoishostingthis-blog.com> domain names are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark, add the descriptive word “blog” with or without a hyphen, and add the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent is using a computer program that embeds and replicates Complainant’s website on the webpages that resolve from Respondent’s disputed domain names. Respondent is copying the look and feel of Complainant’s website on the disputed domain names in an attempt to pass itself off as Complainant.
iii) Respondent has registered and is using the disputed domain names in bad faith. First, Respondent has engaged in a pattern of bad faith by registering two domains in the instant proceeding. Second, Respondent’s use of the disputed domain names to embed and mirror Complainant’s website serves as a disruption to Complainant’s legitimate business. Third, Respondent uses the domains to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness. Fourth, Respondent registered the domains with actual knowledge of Complainant’s mark. Finally, Respondent registered the domains through a privacy service.
B. Respondent
Respondent has not submitted a response for the Panel’s consideration in this proceeding. The Panel notes that the <whoishostingthisblog.com> and <whoishostingthis-blog.com> domain names were registered on August 14, 2015.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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(f), 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 (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 its WHOISHOSTINGTHIS mark to offer reviews, web hosting price comparison, online tools, a “whois” search facility, and other webmaster guides. While Complainant has not registered the WHOISHOSTINGTHIS mark with any trademark registration body, the Panel finds that such registration is unnecessary and finds Complainant has common law rights. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). The Panel holds that Complainant has Policy ¶ 4(a)(i) rights in the WHOISHOSTINGTHIS mark absent a registered trademark.
Complainant has provided the Panel with evidence of its continuous use of the WHOISHOSTINGTHIS mark since 2008 through its domain name <whoishostingthis.com> and argues that it has built up considerable good will around the mark, thereby establishing secondary meaning in mark. The Panel agrees with Complainant’s contentions and finds that continuous use, holding an identical domain name, and media recognition all serve to establish secondary meaning. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards)). Therefore, the Panel agrees that Complainant’s establishment of secondary meaning in the mark demonstrates Policy ¶ 4(a)(i) rights in the WHOISHOSTINGTHIS mark.
Complainant asserts that the <whoishostingthisblog.com> and <whoishostingthis-blog.com> names are confusingly similar to the WHOISHOSTINGTHIS mark as they wholly incorporate Complainant’s mark, add the descriptive word “blog” with or without a hyphen, and add the gTLD “.com.” The Panel agrees with Complainant’s contentions and holds that the addition of a gTLD and/or a hyphen does not differentiate a disputed domain from a complainant’s mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding that “[t]he addition of a hyphen and a gTLD is insufficient to establish distinctiveness from a complainant’s mark.”). Further, the addition of a word descriptive of the use of the mark has the possibility of enhancing a finding of confusing similarity. 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.”). As such, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “JERRY SANDUSKY” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum August 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has submitted evidence that Respondent used the disputed domain names in an attempt to embed and mirror Complainant’s own website, which Complainant believes is likely to mislead Internet users into believing that Respondent is affiliated with Complainant. The website coding employed by Respondent, copies exactly the website it is pointed at incorporating all elements into the disputed domain names. Prior panels have held that such use is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel agrees with Complainant and finds that Respondent’s passing off behavior does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant promotes the position that Respondent’s having registered two infringing domain names in the instant proceeding constitutes bad faith under Policy ¶ 4(b)(ii). As the Panel agrees with Complainant’s position it rests on precedent and finds Respondent acted in bad faith. YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).
Complainant argues that Respondent is using the disputed domain names to disrupt Complainant’s business and to divert Complainant’s customers from Complainant to Respondent’s webpages. Previous panels have found bad faith pursuant to Policy ¶ 4(b)(iii) where a respondent uses a disputed domain name to divert a complainant’s customers to the respondent’s competing business. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain names, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Accordingly, the Panel finds that Respondent engaged in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent is attempting to intentionally attract Internet users by creating a likelihood of confusion through its registration and use of the disputed domain names. Pursuant to Complainant’s argument and evidence, the Panel notes that Respondent is attempting to pass itself off as Complainant. Previous panels have determined that a respondent’s use of a domain name in this manner constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had actual knowledge of Complainant's rights in the WHOISHOSTINGTHIS mark. Complainant contends that Respondent's registering of two domain names that are confusingly similar to the mark as well as the fact that the domain names mirrored and embedded Complainant’s own webpage indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Complainant’s arguments infer that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it agrees that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <whoishostingthisblog.com> and <whoishostingthis-blog.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 5, 2016
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