Leslie Brown v. Peter Auger / adnetagency
Claim Number: FA1703001723736
Complainant is Leslie Brown (“Complainant”), Pennsylvania, USA. Respondent is Peter Auger / adnetagency (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <headshopfinder.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2017; the Forum received payment on March 26, 2017.
On March 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <headshopfinder.net> 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 March 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@headshopfinder.net. Also on March 30, 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 April 27, 2017. pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant has common law rights in its HEADSHOPFINDER mark under Policy ¶ 4(a)(i). Respondent’s <headshopfinder.net> is confusingly similar to Complainant’s mark because it simply appends the generic top-level domain (“gTLD”) “.net” to the fully incorporated HEADSHOPFINDER mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its HEADSHOPFINDER mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent’s use of the domain name constitutes neither a bona fide offering, nor a legitimate noncommercial or fair use because it merely provides identical search, rate, and review functionality as Complainant’s <headshopfinder.com>. See Compl., at Attached Ex. 11 (resolving website for <headshopfinder.net>).
Respondent has registered and is using the <headshopfinder.net> domain name in bad faith. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the HEADSHOPFINDER mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using Complainant’s mark. Moreover, Respondent had actual and constructive knowledge of Complainant’s rights in the HEADSHOPFINDER mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
2. Complainant has established common law TRADEMARK rights in the HEADSHOPFINDER mark since 2009.
3. Respondent registered the disputed domain name on May 14, 2016.
4. The website to which the disputed domain name resolves purports to provides identical search, rating, and reviewing functionality as are provided on 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.
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 first question that arises is whether Complainant has a trade or
service mark on which it may rely. Complainant submits that it has rights in the HEADSHOPFINDER mark. However, Complainant does not claim that it has a trademark registration with a government entity or trademark authority for the mark. A showing of a registered trademark is not necessarily required under Policy ¶ 4(a)(i) (see generally 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.”)). Accordingly, the Panel may look at the evidence to see if Complainant has made out its rights in the mark under the common law.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HEADSHOPFINDER mark. Complainant argues that Respondent’s <headshopfinder.net> domain name is confusingly similar to Complainant’s HEADSHOPFINDER mark because it merely appends the gTLD “.net” to the fully incorporated trademark in the domain name. Such alterations have not been held sufficiently distinguishing to overcome confusing similarity. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Therefore, the Panel holds that <headshopfinder.net> is confusingly similar to Complainant’s HEADSHOPFINDER mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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) (“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 made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HEADSHOPFINDER mark and to use it in its domain name in its entirety;
(b) Respondent registered the domain name on May 14, 2016;
(c) The domain name resolves to a webpage which purports to provide identical search, rating, and reviewing functionality as are provided on Complainant’s website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its HEADSHOPFINDER mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. 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)). The Panel notes that the disputed domain name’s WHOIS information lists “PETER AUGER” as the registrant. Therefore, the Panel may hold that Respondent is not commonly known by the <headshopfinder.net> domain name;
(f) Complainant next contends that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent’s resolving website redirects Internet users to a website that offers services in competition with Complainant and contains similar subject matter and similar functions as Complainant’s website. Such use is not considered a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 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). Complainant has supplied evidence showing that Respondent’s website functions to offer similar goods and services in the United States and Canada to those offered on Complainant’s website. See Compl., at Attached Ex. 11. Therefore, the Panel finds that Complainant has met its burden.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is now well established that to prove bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has registered and is using the <headshopfinder.net> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic from the goodwill of the HEADSHOPFINDER mark for commercial gain. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). As such, the Panel concludes that Respondent created a likelihood of confusion—presumably for commercial gain—and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent at least had constructive, if not actual knowledge of Complainant’s rights in the HEADSHOPFINDER mark. Arguments of bad faith based on constructive notice are generally not persuasive, however, and prior UDRP case decisions decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, a finding of Respondent's actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant submits Respondent had actual knowledge because the disputed domain name is identical to Complainant’s mark and Respondent’s resolving webpage offers identical services to Complainant’s webpage. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights and acted in bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HEADSHOPFINDER mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <headshopfinder.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 1, 2017
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