Spring Lake Communications LLC v. Jack Sun
Claim Number: FA1609001692715
Complainant is Spring Lake Communications LLC (“Complainant”), represented by Robert S. Broder, New York, United States. Respondent is Jack Sun (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <psychicpowernetwork.org>, 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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 7, 2016; the Forum received payment on September 7, 2016.
On September 8, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <psychicpowernetwork.org> 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 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@psychicpowernetwork.org. Also on September 9, 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 September 13, 2016.
On September 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. Maninder Singh 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.
Complainant
Complainant is a provider of psychic reading services. Complainant claims to have registered the PSYCHIC POWER NETWORK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,592,193, registered Aug. 26, 2014).
Complainant claims to own common law rights in the mark, dating back to its first use of the mark and the registration of its PSYCHICPOWERNETWORK.COM domain in 2002.
Complainant contends that Respondent’s domain is identical to Complainant’s mark as it wholly incorporates the mark and merely adds the generic top-level domain (“gTLD”) “.org.”
Complainant contends that Respondent registered the offending domain on September 17, 2012 i.e. long after Complainant’s PSYCHIC POWER NETWORK mark became a dominant name in the psychic reading industry and well after Complainant’s first use of the PSYCHIC POWER NETWORK mark and PSYCHICPOWERNETWORK.COM domain in 2002.
Complainant contends that the offending Domain resolves to a website with a header entitled PSYCHIC POWER NETWORK and directly beneath the header is a scrollable section entitled PSYCHIC POWER NETWORK that has rated listings, including pictures and rate/per minute of Psychics, available by telephone to give readings. At the bottom of the page, a footer reads “Thank you for visiting Psychic Power Network . . . .” The same evidences Respondent’s unauthorized use of Complainant’s federally registered trademark.
Complainant also contends that Respondent’s use of Complainant’s federally registered mark, under the guise of a commercial consumer review website offering paid psychic services and hyperlinks to Complainant’s competitors, is a blatant attempt to wilfully trade on the good will of Complainant’s Mark and deceive consumers into believing that the Complainant is the source of, sponsors, or endorses or otherwise approves of Respondent’s website.
Complainant states that it has not given Respondent any license, permission or authorization by which Respondent could make any use of the PSYHIC POWER NETWORK mark.
Complainant further contends that Respondent’s unauthorized use of Complainant’s Mark is for commercial gain and intentionally and purposefully calculated to misleadingly divert consumers and/or to tarnish the Complainant’s Mark.
Respondent
Respondent contends that it uses the domain to operate a psychic reading review website, which is entirely different from Complainant’s business.
Respondent claims to have registered the domain on September 17, 2010, i.e. before Complainant registered its mark with the USPTO.
Respondent submits that to reduce confusion, Respondent has proactively changed the title of its website from “Psychic Power Network” to “Psychic Reading Reviews.”
Respondent states that it is affiliated with some of the companies it reviews, but it discloses this fact to its readers.
The Panel observes that Complainant is the owner of the PSYCHIC POWER NETWORK service mark registered with the USPTO vide Reg. No. 4592193 dated August 26, 2014. The mark PSYCHIC POWER NETWORK is in use since June 15th, 2002. It also emerges as an admitted position on record that the registration of the disputed domain name by Respondent is only in 2010. The use of the domain name by Complainant is much prior to the registration of the offending domain name by Respondent.
The Panel also observes that Respondent has not furnished any evidence of any kind for showing any permission or authorization by Complainant in its favour for using the mark(s) of Complainant for any of its activities. Respondent while using the offending domain name has also created a hyperlink connecting with the competitors of Complainant.
The Panel finds that Respondent has no rights or legitimate interests in relation to the domain name. The disputed domain name deserves to be transferred to Complainant. Respondent is not entitled to continue to use this domain name. The Complaint deserves to be allowed and the Panel decides accordingly.
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 Panel observes that Complainant is a provider of psychic reading services. Complainant has registered the PSYCHIC POWER NETWORK mark with the USPTO (Reg. No. 4,592,193, registered Aug. 26, 2014). The same is exhibited as Annex E.
The Panel also observes that Complainant owns common law rights in the mark, dating back to its first use of the mark and the registration of its PSYCHICPOWERNETWORK.COM domain in 2002. The Panel notes that the “first use” date, as detailed on the USPTO registration, is June 15, 2002.
The Panel observes that in various other similar circumstances, panels have determined that a complainant does not need to own a valid trademark registration for a mark in order to demonstrate rights in the mark under Policy 4(a)(i), if it can establish common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
The Panel finds that the <psychicpowernetwork.org> domain is identical to Complainant’s mark as it wholly incorporates the mark and merely adds the gTLD “.org.” The Panel also notes that Respondent’s domain additionally eliminates the spacing between the words of Complainant’s mark. Previous panels have held that neither the elimination of spaces nor the affixation of the “.org” gTLD suffices to differentiate a respondent’s domain and a complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (that the domain name <microsoft.org> is identical to the complainant’s mark).
The Panel notes Complainant’s contention that the offending Domain resolves to a website with a header entitled PSYCHIC POWER NETWORK and directly beneath the header is a scrollable section entitled PSYCHIC POWER NETWORK that has rated listings, including pictures and rate/per minute of Psychics, available by telephone to give readings. The Panel also notes that Respondent is willing to change the title of the disputed domain name as ‘Psychic Reading Reviews’. The Panel, however, finds no merit in Respondent’s willingness to change the title of the disputed domain name as the domain name itself will remain identical and confusingly similar to that of Complainant’s mark and domain name.
For these reasons, the Panel finds that Respondent’s domain is identical to Complainant’s mark pursuant to Policy 4(a)(i).
The Panel is reminded that 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) (holding, “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 Panel finds that Complainant has discharged this burden. The Panel agrees with Complainant’s contention that Respondent has never been known by the mark or any variation thereof, and that Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain incorporating the PSYCHIC POWER NETWORK mark. See Citigroup Inc. v. Horoshiy, Inc., FA0406000290633 (Forum Aug. 11 2004) (finding that Respondent had not established rights or legitimate interest in the disputed domain where there was no evidence that Respondent was commonly known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel observes that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel also observes that Respondent uses the domain to promote goods and services of others by misdirecting traffic meant for Complainant to competing hyperlinks and phone psychics (Annex F). Previous Panels have held that a respondent’s use of a domain to host competing hyperlinks does not constitute 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). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (finding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds that Respondent is using the domain name in connection with psychic reading services, under the guise of a review site, and is misleadingly diverting consumers with the intent for commercial gain. See Disney Enters., Inc. v. Kamble, FA 918556 (Forum Mar. 27, 2007) (finding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate non-commercial or fair use under Policy 4(c)(iii)).
The Panel agrees with Complainant’s contention that Respondent does not have any right or legitimate interests in the disputed Domain name.
The Panel finds merit in Complainant’s contention that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and psychic reading service on Respondent’s website.
The Panel also observes that by the reproduction of Complainant’s mark PSYCHIC POWER NETWORK by Respondent in its entirety in registration of the domain name <psychicpowernetwork.org>, it is amply clear that Respondent clearly knew of the existence of Complainant’s trademark and of its relevance in the market. This clearly shows his bad faith intention of misusing the Complainant’s trademark and establishes that the Respondent had knowledge of Complainant’s rights in the mark PSYCHIC POWER NETWORK at the time of registration of the disputed domain name. See DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094, wherein it was observed that the registration of a domain name in the name of a famous mark, of which the respondent had knowledge, may, in any case, be considered strong supporting evidence of bad faith.
As such, the Panel finds that Respondent registered and is using the domain in bad faith, in violation of Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <psychicpowernetwork.org> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: October 1, 2016
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