Skullcandy, Inc. v. Holder of Domain Name <skullcandy-headphones.com>
Claim Number: FA1605001675382
Complainant is Skullcandy, Inc. (“Complainant”), represented by Christopher M. Dolan of BARNES & THORNBURG LLP, Illinois, United States. Respondent is Holder of Domain Name <skullcandy-headphones.com> (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skullcandy-headphones.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 May 17, 2016; the Forum received payment on May 18, 2016.
On May 18, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <skullcandy-headphones.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 May 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@skullcandy-headphones.com. Also on May 19, 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 June 14, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant operates a headphone and audio related accessories business. Complainant holds multiple governmental registrations in relation to the SKULLCANDY mark. See, e.g., US Trademark No. 3,168,695 (registered Nov. 7, 2006). Respondent’s <skullcandy-headphones.com> domain name is confusingly similar as it adds a hyphen, the descriptive term “headphones,” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
ii) Respondent has no rights or legitimate interests in the <skullcandy-headphones.com> domain name. Respondent has not been authorized or licensed to use the SKULLCANDY mark in connection with domain name registrations, and is not commonly known by the disputed domain name. Further, Respondent has attempted to pass itself off as Complainant online by including various copyrighted material from Complainant’s website, as well as including Complainant’s trademarked logos on the resolving pages of the disputed domain name. Further, Respondent’s website encourages Internet users to enter their credit card information, indicating a potential attempt to phish for Internet user’s financial and personal information.
iii) Respondent registered and used the <skullcandy-headphones.com> domain name in bad faith. Respondent’s use of the disputed domain indicates an attempt to attract Internet users and profit from their confusion as per the language of Policy ¶ 4(b)(iv). Lastly, Respondent had actual and/or constructive knowledge of the SKULLCANDY mark and Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response for the panel’s consideration. The Panel notes that the <skullcandy-headphones.com> domain name was registered on May 1, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Identity Theft
Respondent contends that it has been the victim of identity theft. Specifically, on May 27, 2016, the Forum received email communications from Respondent stating that the only thing Respondent had ever done with “skull candy” is purchase a pair of headphones over a year ago, and that the registrant info contains Respondent’s name and previous address. With the exception of Respondent’s emails denying registration the domain name, Respondent has not provided other evidence in support of a claim of stolen identity. Further, as of June 8, 2016, the Forum had not received any formal Response and proceeded with the Panel appointment.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
However, according to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.”
In this case, neither Complainant nor Respondent has explicitly requested such redaction, but the Panel finds Respondent’s email to imply such a request. Consequently, the Panel chooses to redact Respondent’s information from the Panel’s decision.
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(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 operates a headphone and audio related accessories business. Complainant purportedly holds multiple governmental registrations in relation to the SKULLCANDY mark. See, e.g., US Trademark No. 3,168,695 (registered Nov. 7, 2006). Panels have regarded USPTO registrations indicate rights under Policy ¶ 4(a)(i). See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). Therefore, this Panel agrees Complainant has succeeded in demonstrating rights in the SKULLCANDY mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <skullcandy-headphones.com> domain name is confusingly similar as it adds a hyphen, the descriptive term “headphones,” and the gTLD “.com” to the fully incorporated mark. Panels have seen the inclusion of descriptive terms may add to the confusing similarity of a disputed domain. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Further, addition of hyphenation and gTLDs have also been considered inconsequential in Policy ¶ 4(a)(i) analyses. 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.”). Therefore, this Panel agrees that Respondent has not created a domain name that can be considered distinguishable from the SKULLCANDY 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 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 (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 <skullcandy-headphones.com> domain name. Complainant contends that Respondent has not been authorized or licensed to use the SKULLCANDY mark in connection with domain name registrations, and is not commonly known by the disputed domain name. Respondent has not submitted a Response, and although the WHOIS indicates "Holder of Domain Name <skullcandy-headphones.com>" as registrant of record (which seems to indicate a relationship with the disputed domain), the name itself, without more, cannot overcome Complainant’s argument under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Therefore, this Panel agrees that Complainant has succeeded under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent has attempted to pass itself off as Complainant online by including various copyrighted material from Complainant’s website, as well as including Complainant’s trademarked logos on the resolving pages of the disputed domain name. Further, Complainant asserts that Respondent’s website encourages Internet users to enter their credit card information, indicating a potential attempt to phish for Internet user’s financial and personal information. Such use cannot be considered to evince rights and legitimate interests in a domain name. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, this Panel agrees that no bona fide offering of goods or services or any legitimate noncommercial or fair use exists through the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant urges that Respondent registered and used the <skullcandy-headphones.com> domain name in bad faith. Complainant argues that Respondent’s use of the disputed domain indicates an attempt to attract Internet users and profit from their confusion as per the language of Policy ¶ 4(b)(iv). Panels have agreed that passing off and phishing can lead to a finding of bad faith. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Accordingly, this Panel sees an attempt by Respondent to attract Internet users via a confusingly similar domain name and induce them to interact with it through passing off and/or phishing and thereby accrue financial gain, conduct proscribed by Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of the SKULLCANDY mark and Complainant’s rights in the mark under Policy ¶ 4(a)(iii). Complainants cites Respondent’s activities associated with the disputed domain upon registration; namely passing off and phishing. Due to this use, Complainant argues actual knowledge. Further, due to Complainant’s longstanding registration of the SKULLCANDY mark, Complainant argues constructive knowledge. Constructive knowledge is not recognized under the Policy. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel agrees that the evidence is sufficient especially from the use manner of the disputed domain name to infer Respondent had actual knowledge of Complainant and its rights in the SKULLCANDY mark under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skullcandy-headphones.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 25, 2016
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