Toni Buckley aka Toni Dockter aka T.B. Dockter v. Masatoshi Yamamoto / Gran Net Co.,Ltd
Claim Number: FA1701001710735
Complainant is Toni Buckley aka Toni Dockter aka T.B. Dockter (“Complainant”), represented by Eric Misterovich, Michigan, USA. Respondent is Masatoshi Yamamoto / Gran Net Co.,Ltd (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <percyveerance.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2017; the Forum received payment on January 4, 2017.
On January 4, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <percyveerance.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 January 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2017 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@percyveerance.com. Also on January 6, 2017, 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 February 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 has requested that this proceeding be conducted in English and is unopposed in that request. The Panel notes that the disputed domain name is in the English language, and that Respondent was a Respondent in a previous UDRP case conducted in English. See Associazione Radio Maria v Masatoshi Yamamoto, Gran Net Co., Ltd, WIPO, Case No. D2015-0386 (Issued April 26, 2015) (where the same respondent failed to respond, including to the request regarding the language of the proceedings). Pursuant to UDRP Rule 11(a), the Panel finds that it is likely that Respondent is conversant in the English language, and thus determines that the proceeding will be conducted in English. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <percyveerance.com> domain name is identical to Complainant’s PERCY VEERANCE mark.
2. Respondent does not have any rights or legitimate interests in the <percyveerance.com> domain name.
3. Respondent registered and uses the <percyveerance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the PERCY VEERANCE mark, used in connection with a series of children’s’ books since 2001.
Respondent registered the <percyveerance.com> domain name on July 6, 2016, and uses it to display pornographic materials.
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 Panel notes that Complainant previously held the <percyveerance.com> domain name, as well as a United States Patent and Trademark (“USPTO”) registration for the PERCY VEERANCE mark (Registration No. 2,494,948, registered Oct. 1, 2001). This registration was cancelled due to Complainant’s inadvertent failure to renew the registration in 2012. Valid and current trademark registrations are not necessarily required to establish rights in a mark under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Therefore, the Panel reviews evidence provided by Complainant to determine whether it has common law rights in the PERCY VEERANCE mark.
Complainant argues that it has common law rights in the PERCY VEERANCE mark, which it has continually used since 2000 in connection with a series of children’s books. Complainant also demonstrates that it was previously the owner of the domain name at issue, originally registered by Complainant on April 4, 2000. Complainant has provided evidence of advertising and promotional materials and listings of its products online. The Panel finds that Complainant has provided sufficient evidence of its common law rights in the PERCY VEERANCE mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards. Complainant has used its mark in the oil and gas industry since 1997.). Similarly, the Panel finds that Complainant has rights in the PERCY VEERANCE mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <percyveerance.com> is identical to the mark, merely omitting the space between words in the mark and adding the “.com” gTLD. The Panel agrees and finds that the <percyveerance.com> domain name is identical to Complainant’s PERCY VEERANCE mark. See Leland Turner v. joseph derer, FA 1618086 (Forum June 25, 2015) (“The [<lelandturner.com>] Domain Name consists of the Complainant's unregistered mark LELAND TURNER plus the gTLD designation .com. The addition of the .com gTLD does not serve to distinguish the Domain Name from Complainant's LELAND TURNER mark and the Panel finds that this domain name is identical to a mark in which Complainant has rights for the purpose of the Policy.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <percyveerance.com> domain name and is not a licensee of Complainant. The WHOIS indicates that “Masatoshi Yamamoto / Gran Net Co., Ltd” is the registrant of the disputed domain name, which does not demonstrate that Respondent is commonly known by the disputed domain name¶ 4(c)(ii). The Panel thus finds that Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent uses the <percyveerance.com> domain name to display pornographic materials, which shows a lack of any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Complainant has met its prima facie burden under Policy ¶ 4(c)(ii), and that Respondent has failed to use the disputed domain name for a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used the <percyveerance.com> domain name to disrupt Complainant’s legitimate business, by using it to resolve to explicit adult content, which has negatively affected Complainant’s business with Amazon.com. In fact, Complainant has been precluded from selling children’s books on Amazon.com until it recovers the <percyveerance.com> domain name from Respondent and stops the posting of pornographic material there. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). The Panel finds that Respondent has disrupted Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s use of the website for adult-oriented material constitutes bad faith Policy ¶ 4(a)(iii). The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) where the panel stated, “Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).” The Panel notes that Respondent registered the disputed domain name soon after Complainant’s ownership inadvertently lapsed, a further indication of Respondent’s opportunistic bad faith under Policy ¶ 4(a)(iii). See Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) where the panel held that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire.).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <percyveerance.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 3, 2017
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