Insomniac Holdings, LLC v. PROXY PROTECTION LLC
Claim Number: FA1704001725064
Complainant is Insomniac Holdings, LLC (“Complainant”), represented by Christopher Varas of Kilpatrick Townsend & Stockton LLP, Washington, USA. Respondent is PROXY PROTECTION LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edclasvegas.com>, registered with DreamHost, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2017; the Forum received payment on April 3, 2017.
On April 5, 2017, DreamHost, LLC confirmed by e-mail to the Forum that the <edclasvegas.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 April 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@edclasvegas.com. Also on April 7, 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 May 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Insomniac Holdings, LLC, is a premier festival owner and organizer based in Beverly Hills, California. In connection with this business, Complainant uses the EDC mark to promote its goods and services. Complainant has rights in the EDC mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,090,760, registered Jan. 24, 2012).
2. Respondent’s domain name, <edclasvegas.com>,[1] is confusingly similar to Complainant’s EDC mark as it contains the mark in its entirety and appends the geographic term “lasvegas” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent lacks rights and legitimate interests in <edclasvegas.com>. Respondent has not been commonly known by the domain name and has failed to use it in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses <edclasvegas.com> to misleadingly divert Internet users to a website which tarnishes Complainant’s mark by denigrating Complainant’s founder, and otherwise makes no active use of the name.
4. Respondent registered and uses <edclasvegas.com> in bad faith. Respondent intentionally diverts Internet users seeking Complainant or Complainant’s goods and services to Respondent’s website containing adult-oriented derogatory terms.
5. Further, Respondent’s use of a confusingly similar domain name to make derogatory commentary about Complainant evidences Respondent’s knowledge of Complainant and therefore constitutes bad faith use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EDC mark. Respondent’s domain name is confusingly similar to Complainant’s EDC mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <edclasvegas.com> domain name, and that Respondent registered and uses the domain name 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:
(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.”).
Complainant has rights in the EDC mark based upon its registration with the USPTO (Reg. No. 4,090,760, registered Jan. 24, 2012). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). The Panel therefore finds that Complainant has rights in the EDC mark pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s domain name, <edclasvegas.com>, is confusingly similar to Complainant’s EDC mark as the name contains the mark in its entirety and adds the geographic term “lasvegas” and the gTLD “.com.” The addition of geographic terms that relate to a complainant’s activities does not adequately differentiate between a mark and a domain name. 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.). Likewise, the addition of a gTLD to a complainant’s mark does not differentiate the mark from the resulting domain name. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that <edclasvegas.com> is confusingly similar to Complainant’s EDC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <edclasvegas.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <edclasvegas.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EDC mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name.”). The WHOIS information of record identifies Respondent as “PROXY PROTECTION, LLC.”
Additionally, the lack of evidence in the record to indicate that Respondent has been authorized to register a domain name using Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the <edclasvegas.com> domain name. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <edclasvegas.com> domain name is shown by its failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant has provided evidence that Respondent uses the domain name to misleadingly divert Internet users to a website which uses adult language to tarnish Complainant’s mark by denigrating Complainant’s founder. Such use is not a use demonstrative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Paws, Inc. v. Zuccarini, FA 125368 (Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Paul Petrovich and Petrovich Development Company v. Jazz Melody FA 290894 (Forum Sept. 10, 2004) (finding legitimate or fair use impossible to establish when a domain name incorporates nothing more than another’s mark and a gTLD and is used to criticize the mark owner, purportedly on behalf of the complainant). The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of the <edclasvegas.com> domain name to divert Internet users to a website featuring adult-oriented vulgar and racist material demonstrates its bad faith. The Panel agrees. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, 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).”).
Complainant also argues that Respondent has failed to actively use the disputed domain name. Failure to make an active use of a domain name can show bad faith per Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel therefore finds Respondent registered and uses the <edclasvegas.com> domain name in bad faith.
Complainant further argues that Respondent’s use of the domain name to make derogatory comments about Complainant’s founder shows bad faith and actual knowledge of Complainant and Complainant’s rights in the EDC mark. This shows that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the <edclasvegas.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds 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 <edclasvegas.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 15, 2017
[1] The domain name was originally registered May 5, 2013 and was subsequently acquired by Respondent on May 31, 2016.
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