Pgm-Mb Holdings LLC a/k/a Prometheus Global Media, LLC d/b/a Media Bistro v. TOMMY PANDOLF
Claim Number: FA1611001704313
Complainant is Pgm-Mb Holdings LLC a/k/a Prometheus Global Media, LLC d/b/a Media Bistro (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is TOMMY PANDOLF (“Respondent”), Meridan, Connecticut.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <media-bistro.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2016; the Forum received payment on November 22, 2016.
On November 23, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <media-bistro.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 November 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@media-bistro.com. Also on November 29, 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 December 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 is the leading media, advertising, career, job placement and recruiting website worldwide.
In connection with this business, Complainant runs MEDIA BISTRO, a job listing website that specializes in media careers.
Complainant holds registrations for the MEDIABISTRO.COM, MEDIABISTRO, and MEDIA BISTRO marks, which are on file with the United States Patent and Trademark Office (“USPTO”) (including MEDIABISTRO.COM, Registry No. 3,435,026, registered May 27, 2008; MEDIABISTRO, Registry No. 3,090,411, registered May 9, 2006; and MEDIA BISTRO, Registry No. 2,559,669, registered Apr. 9, 2002).
Respondent registered the domain name <media-bistro.com> on or about November 30, 2015.
The domain name is confusingly similar to Complainant’s MEDIABISTRO.COM, MEDIABISTRO, and MEDIA BISTRO marks.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use its marks in a domain name.
The domain name resolves to a website displaying content from Complainant’s Hollywood Reporter website in an attempt to trick advertisers into thinking that they are buying advertising space from Complainant.
Respondent additionally displays on its resolving webpage social media links which refer Internet users to Complainant’s social media accounts.
Such behavior amounts to passing off, and does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent uses the domain name and resolving site to confuse Internet users and potential advertisers and to divert them from Complainant’s legitimate website to Respondent’s website for its commercial gain.
Respondent knew of Complainant and its rights in the MEDIABISTRO.COM, MEDIABISTRO, and MEDIA BISTRO marks when it registered and while it uses the domain name.
Respondent’s registration and use of the domain name is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the MEDIABISTRO.COM, MEDIABISTRO, and MEDIA BISTRO marks for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the marks with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding that a UDRP complainant had rights in a mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the United States Patent and Trademark Office).
This is true without regard to whether Complainant’s rights in its marks arise from their registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Panama). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <media-bistro.com> is confusingly similar to Complainant’s MEDIABISTRO.COM, MEDIABISTRO and MEDIA BISTRO marks. The domain name contains the marks in their entirety, merely deleting the space between the terms of one of the marks, adding the generic Top Level Domain (“gTLD”) “.com” in two cases and a hyphen in all cases. These alterations of the marks, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that adding a hyphen and a top-level domain to the mark of another in creating a domain name is irrelevant for purposes of analysis under Policy ¶ 4(a)(i)). See also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum April 30, 2007) (finding that eliminating the space between the terms of a UDRP complainant’s mark and the addition to it of a gTLD in creating a domain name do not establish distinctiveness from that mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends both that Respondent has not been commonly known by the <media-bistro.com> domain name and that Complainant has not authorized Respondent to use its MEDIABISTRO.COM, MEDIABISTRO and MEDIA BISTRO marks in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as
“TOMMY PANDOLF,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified the registrant of that domain name as “Fred Wallace”). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had never authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <media-bistro.com> domain name to pass itself off as Complainant, thus to profit commercially by tricking consumers into thinking they are buying advertising space from Complainant. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the contested domain name within the terms of those provisions. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent … is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent registered and uses the <media-bistro.com> domain name, which is confusingly similar to Complainant’s MEDIABISTRO.COM, MEDIABISTRO and MEDIA BISTRO marks, to attempt to profit financially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. This use of the domain name disrupts Complainant’s business, and, under Policy ¶¶ 4(b)(iii) and (iv), it therefore stands as proof of Respondent’s bad faith in registering and using the domain name. See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the MEDIABISTRO.COM, MEDIABISTRO and MEDIA BISTRO marks when it registered the <media-bistro.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (finding, under Policy ¶ 4(a)(iii), that a respondent registered a domain name in bad faith, having first concluded that that respondent had actual knowledge of a UDRP complainant's mark when it registered that domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy 4(a)(iii).
Having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <media-bistro.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 29, 2016
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