Wiluna Holdings, LLC v. EDNA SHERMAN
Claim Number: FA1607001684371
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John P. Sullivan of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is EDNA SHERMAN (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4free.net>, registered with eNom, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2016; the Forum received payment on July 19, 2016.
On July 20, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <clips4free.net> 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 July 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@clips4free.net. Also on July 26, 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 August 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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, states that it is the owner and operator of a website that features adult-entertainment oriented media, offered under the trademarks CLIPS4SALE.COM, CLIPS4SALE, CLIPS4, and CLIP4, since at least as early as July 2003. The website in question is at the domain name <clips4free.net>. Complainant registered the CLIPS4SALE mark in the United States in 2008.
According to Complainant, the disputed domain name is confusingly similar to its CLIPS4SALE mark as the domain name merely removes the generic term “sale” from the mark and adds the generic term “free,” as well as including the generic top-level domain (“gTLD”) “.net.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information and a lack of any evidence to the contrary. Further, Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to resolve to a web site that offers products that compete with those of Complainant, and that contains click through advertisements through which Respondent presumably receives commercial profit. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. The web site at the disputed domain name competes and disrupts Complainant’s business. Apart from use of the term “free” in place of the term “sale”, Respondent has copied the exact look and feel of Complainant’s legitimate <clips4sale.com> website. Respondent’s confusingly similar domain name is used in bad faith to divert Internet users from Complainant’s legitimate website to Respondent’s domain for Respondent’s commercial gain. Respondent is attempting to pass itself off as Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark CLIPS4SALE dating back to 2008.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that features products that compete with those of Complainant.
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.”).
The disputed domain name is confusingly similar to the CLIPS4SALE mark in which Complainant asserts rights: it omits the generic term “sale” and adds the generic term “free,” as well as the gTLD “.net.” The addition or removal of a generic term has not been seen as a distinguishing difference when determining whether or not a domain is confusingly similar to a mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Panels have also held that the presence of the gTLD “.com” is irrelevant to an analysis of confusing similarity. See Verragio, LTD. v. Lance Liao, FA 1445159 (Forum July 5, 2012) (“Respondent’s <verragio.net> domain name is identical to Complainant’s VERRAGIO mark, since Respondent has merely added the generic top-level domain (“gTLD”) ‘.net.’”). This Panel thus concludes that the disputed <clips4free.net> domain name is confusingly similar to the CLIPS4SALE mark under Policy ¶ 4(a)(i).
Respondent has not been commonly known by the disputed domain name. Indeed, WHOIS information associated with the disputed domain name shows that Respondent registered the domain using the name, “EDNA SHERMAN,” which does not appear to resemble the domain name at issue in this proceeding. Panels have found a respondent to not be commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Accordingly this Panel finds that Respondent has not been commonly known by the <clips4free.net> domain name under Policy ¶ 4(c)(ii).
Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to use the disputed domain to host a landing page that mimics Complainant’s own pornographic offerings. Panels have held that using a confusingly similar domain to resolve to a website hosting competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Panels have also considered that instances in which a respondent imitates the look and feel of a complainant’s web offerings indicate a lack of rights and legitimate interests. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself off 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). Thus this Panel finds that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As stated previously, Respondent uses the disputed domain name to resolve to a landing page hosting various links to pornographic material that competes with the pornographic material offered by Complainant. Panels have found a respondent to have acted in bad faith where a respondent directed users to a website hosting competing links. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA 1623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). This Panel accordingly finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent has acted in bad faith through confusing and attracting Internet users to Respondent’s domain for commercial profit. As Complainant states in the Complaint, “From the purple color scheme to the distinctive film strip banner heading, Respondent’s website represents a near identical copy of Complainant’s website.” Given that Respondent is using the confusing similarity between the disputed domain name and the CLIPS4SALE mark for the purpose of confusing and attracting internet users for commercial profit, this Panel finds that Respondent has acted in bad faith. See CAN Financial Corporation v. William Thomson / CAN Insurance, FA 1541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clips4free.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 20, 2016
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