Insomniac Holdings, LLC v. Mark Daniels / IDrive Media Group
Claim Number: FA1609001692320
Complainant is Insomniac Holdings, LLC (“Complainant”), represented by Christopher Varas of Kilpatrick Townsend & Stockton LLP, Washington, USA. Respondent is Mark Daniels / IDrive Media Group (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edcorlando.com>, registered with GoDaddy.com, LLC.
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.
Jonathan Agmon, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2016; the Forum received payment on September 2, 2016.
On September 7, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <edcorlando.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@edcorlando.com. Also on September 8, 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.
A timely Response was received and determined to be complete on October 3, 2016.
On October 06, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant argues it has rights in the EDC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,090,760, registered on January 24, 2012).
The Complainant further aruges that the Respondent’s <edcorlando.com> domain name is confusingly similar to the EDC mark because it contains the mark along with the geographic term “Orlando” and the generic top-level domain (“gTLD”) “.com.”
The Complainant further argues that the Respondent is not commonly known by the <edcorlando.com> domain name because WHOIS information identifies “Mark Daniels / IDrive Media Group “ as Registrant.
The Complainant further argues that the Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used in an attempt to pass itself off as being operated by the Complainant through the display of the EDC mark and other mimicry of the Complainant’s website. In addition, Respondent lacks rights or legitimate interests in the <edcorlando.com> domain name because it offers the domain name for sale.
The Complainant further argues that the Respondent uses the <edcorlando.com> domain name in bad faith because it offers to sell the domain name in excess of out-of-pocket expenses and because the resolving website is used to make unauthorized sale of tickets to the Complainant’s EDC branded events. The Complaint contends that the Respondent registered the <edcorlando.com> domain name in bad faith because the timing of the domain registration relative to thee Complainant’s announcement of the 2015 EDC Orlando event suggests opportunistic bad faith and because the timing of registration combined with the Respondent’s use of the resolving website and the Complainant’s registration and use of the EDC mark suggest the Respondent registered the domain name with knowledge of the Complainant’s rights in the mark.
B. Respondent
The Respondent argues that he uses the <edcorlando.com> domain name to resolve to a website that sells tickets to the Complainant’s EDC branded events by having been approved by an affiliate that the Complainant allows to sell such tickets and the Respondent does so without leading consumers to believe the website is operated by the Complainant, through the use of a disclaimer and a requirement that consumers acknowledge such before purchase.
The Respondent further argues that he did not register the <edcorlando.com> domain name in bad faith because it was registered as a mock-up design for an economic division commission in Orlando, Florida and without knowledge of the Complainant.
The Respondent further argues that he does not use the <edcorlando.com> domain name in bad faith because the sale of tickets for the Complainant’s events is done through the approval of an affiliate of the Complainant, without creating confusion about the Complainant’s connection to the website and the resulting profits benefit the Complainant.
The Respondent further argues that he has never offered to sell the <edcorlando.com> domain name to the Complainant without the Complainant beginning such discussions.
C. Additional Submissions
The Complainant contends in its additional submission that the claims made by the Respondent in the Response are made with blatant disregard to the substance and purpose of the Policy. The Complainant contends that the Respondent’s assertions ultimately support the Complainant’s contentions and serve to verify Respondent’s bad faith.
The Complainant further contends that the Respondent uses the disputed domain name <edcorlando.com> to offer competing services for financial gain, namely redirecting Internet users seeking Complainant’s services to TicketNetwork.com, which is not an authorized reseller for Complainant, generating a profit of approximately $3,840.04 as of October 3, 2016.
The Complainant further argues that the Respondent did not provide evidence to support its claims that he registered <edcorlando.com> in order to pitch his web design services to the Orlando Economic Development Commission.
The Complainant further contends that the Respondent registered the domain name <talenttickets.com> on February 15, 2008, and was using it to offer tickets to Complainant’s Electric Daisy Carnival at least as early as April 29, 2012, therefor the Respondent's claim he was not aware of the Complainant’s Orlando event must be rejected.
The Complainant further argues that the Respondent is not an authorized reseller, and the pending cancellation action concerning the Complainant’s U.S. Trademark Registration No. 4,090,760 is irrelevant to these Proceedings, and that the Complainant’s Trademark Registration is not required to cover the services offered by the Respondent under the Policy.
The Complainant further contends that there is no way that the Respondent’s disclaimer can prevent confusion by Internet users.
Additional Submission by the Respondent
The Respondent contends in its additional submission that the Complainant claims that the Respondent knew about the EDC festival is false, and that he has proven he is authorized ticket seller.
The Respondent further argues that IDrive Media Group is not a direct infringer because it only refers people to buy tickets through TicketNetwork.com affiliate.
The Respondent further argues that in accordance to Levi Strauss & Co. v. Papikian Enterprises, Inc., 10 Civ. 05051, 2011 WL 5192237 (N.D. Cal. Nov. 1, 2011) he should be permitted to continue use of the disputed domain name.
The Respondent further argues that its Disclaimer on the website under <edcorlando.com> is valid and that he has not attempted to lead consumers into believing that they are viewing the Complainant’s website.
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.
The Complainant has registered the EDC mark through with the USPTO (Reg. No. 4,090,760, registered on January 24, 2012). The mark is used in conjunction with the organziation and hosting of concerts and other events. The Complainant has provided this registration in its Annex F. As such, the Panel finds that the Complainant has rights in the EDC mark according to Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
The Complainant argues that the Respondent’s <edcorlando.com> domain name is confusingly similar to the EDC mark because it contains the EDC mark along with the term “Orlando” and the gTLD “.com.”, the Complainant urges that “Orlando” is a geographic term and, as such, cannot differentiate the domain name and the mark. In this case, the Panel agrees that the term “Orlando” and the addition of the gTLD “.com” do not serve to differentiate the disputed domain name from the EDC mark. The Panel find the <edcorlando.com> domain name confusingly similar to the EDC mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant's business operations do not remove a domain name from the realm of confusing similarity.); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Respondent’s argued that the Complainant’s trademark rights in the EDC mark should be disregarded because proceedings to cancel the EDC mark are pending before the United States Patent & Trademark Office. The Panel this agrees. At the time of this decision, the Complainant is the sole registrant of the EDC Federally registered trademark. The Respondent did not claim that he has rights to the EDC trademark and has not challenged the Complainant’s claims with respect to Policy ¶ 4(a)(i). The Panel reviewed of the current proceedings against the EDC registered trademark and reached the conclusion that they do not bear on these proceedings.
Taking into consideration that the Respondent did not provide any arguments regarding Policy ¶ 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark.
The Complainant must first make a prima facie case that the 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.”).
The Complainant maintains that the Respondent is not commonly known by the <edcorlando.com> domain name because available WHOIS information identifies “Mark Daniels / IDrive Media Group “ as Registrant. See Compl., at Attached Annex A. Accordingly, the Panel may find that Respondent is not so known. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
The Complainant further contends that Respondent fails to use the <edcorlando.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used in an attempt to pass itself off as being operated by Complainant through the display of the EDC mark, the Complainant’s business name “Insomniac,” and other mimicry of Complainant’s website. The Complainant has provided screenshots of the resolving website in its Annexes K & N to demonstrate this use. The Complainant has also provided evidence of actual customer confusion in its Annex L. The Panel finds this evidence sufficient to make a prima facie case that the Respondent fails to use the <edcorlando.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). 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). Aside from arguing that the Respondent is acting in good faith, the Panel finds that the Respondent’s Response and Additional Submission fails to provide actual evidence to contradict the Complainant’s evidence.
The Panel notes that, while the Respondent argues its use of a disclaimer makes its use of the <edcorlando.com> domain name not designed to create confusion about the relationship between the domain name and the Complainant, prior panels have found that a disclaimer, by itself, is not enough to mitigate confusion. See AltaVista Co. v. AltaVisa, FA 95480 (Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
Further, the Complainant argues that the Respondent lacks rights or legitimate interests in the <edcorlando.com> domain name because it offers the domain name for sale. The Complainant urges that the Respondent has previously accepted money from Complainant for the domain name, then did not transfer the domain name and again offered to sell it. The Complainant has provided evidence of correspondence related to the initial claimed sale, in its Annex M, along with evidence that the domain is listed for sale at a cost of $999.00, and that when the Complainant offered such, Respondent counteroffered with $4,999.00, in its Annex O. The Respondent did not deny these claims or the evidence submitted. The Panel finds this evidence shows the Respondent has attempted to sell the <edcorlando.com> domain name, and therefor finds the Respondent lacks rights or legitimate interests in the domain name. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Taking into consideration that the Complainant was able to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and the Respondent failure to show that he does have rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant prevails under ¶ 4(a)(ii).
The Complainant alleges that the Respondent registered and uses the <edcorlando.com> domain name in bad faith because it offers to sell the domain name in excess of out-of-pocket expenses. The Complainant urges that the Respondent has previously accepted money from the Complainant for the domain name, then did not transfer the domain name and again offered to sell it.
The Complainant has provided evidence of correspondence related to the initial claimed sale, in its Annex M, along with evidence that the domain is listed for sale at a cost of $999.00, and that when the Complainant offered such, the Respondent counteroffered with $4,999.00, then the Compliant has offered $1,500 and the Respondent counteroffered with $4,500, in its Annex O. The Respondent did not deny the allegations or evidence shown in Annex M. The Panel finds this evidence sufficient to show the Respondent is offering the <edcorlando.com> domain name in excess of its out of pocket expenses, and finds that the Respondent uses the domain name in bad faith according to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
The Complainant contends that the Respondent uses the <edcorlando.com> domain name in bad faith because the resolving website is used to make unauthorized sale of tickets to the Complainant’s EDC branded events in a manner designed to create confusion about the ownership of the domain name.
The Complainant’s Annexes K & N shows the Respondent displaying the Complainant’s EDC mark, the Complainant’s business name and other web content to create the impression that the Respondent is, or is authorized by, the Complainant to sell tickets to the Complainant’s EDC branded events. Further, the Complainant claims that its Annex L contains evidence of actual consumer confusion. The Panel finds the above evidence sufficient to indicate the Respondent uses the <edcorlando.com> domain name in bad faith according to 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); see also Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel notes that, while the Respondent argues its use of a disclaimer makes its use of the <edcorlando.com> domain name not designed to create confusion about the relationship between the domain name and Complainant, prior panels have found that a disclaimer by itself is not enough to mitigate confusion or bad faith. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
In that matter, the Panel also notes that the disputed domain name title is stating: "EDC Orlando - Official Website for EDC Orlando" which is considered by the Panel, in this relevant circumstances, as a bad faith intention to create confusion about the relationship between the domain name and the Complainant.
The Complainant maintains that the Respondent registered the <edcorlando.com> domain name in bad faith because the timing of the domain registration relative to the Complainant’s announcement of the 2015 EDC Orlando event suggests opportunistic bad faith. The Complainant has provided, in its Annex I, evidence of having announced the line-up of the 2015 EDC Orlando event during October 2013, and, in Annex A, evidence that the domain name was registered on October 31, 2013. The Panel finds the timing of this registration sufficient to suggest targeting the Complainant’s use of the EDC mark, it finds that the Respondent’s registration constituted opportunistic bad faith. See Amazon Technologies, Inc. v. harshit dhingaun, FA1505001619696 (Forum June 10, 2015) (holding that the respondent had demonstrated opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the <amazonfashionindia.com> and <amazonindiafashion.com> domain names within days after the announcement of the complainant’s sponsorship of India Fashion Week).
Further, the Complainant argues that the Respondent registered the <edcorlando.com> domain name in bad faith because the timing of registration combined with the Respondent’s use of the resolving website and the Complainant’s registration and use of the EDC mark suggest the Respondent registered the domain name with knowledge of the Complainant’s rights in the mark. The Complainant also submitted additional evidence showing the Respondent was selling Complainant' festival tickets via other website, which also indicates that the Respondent was aware of the Complainant name and business before registering the disputed domain name. The Panel finds the above persuasive to show that the Respondent had actual knowledge of the Complainant’s rights in the EDC mark at the time of the disputed domain name registration, and finds that the Respondent registered the <edcorlando.com> domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
It must be noted that even in its additional submission. the Respondent failed to provide any evidence to support his claim that the disputed domain name was registered in order to do a mock-up design website for another entity, nor any evidence for any approach to him in that matter as he claims, therefor the Panel denies this argument.
Therefore, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking
The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(i), and therefor the Panel finds that the Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edcorlando.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: October 15, 2016
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