Mayweather Promotions, LLC v. Privacy protection service - whoisproxy.ru
Claim Number: FA1704001728086
Complainant is Mayweather Promotions, LLC (“Complainant”), represented by Lauri S. Thompson of Greenberg Traurig, LLP, Nevada, USA. Respondent is Privacy protection service - whoisproxy.ru (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <themoneyteam24.com>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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 April 20, 2017; the Forum received payment on April 20, 2017.
On April 24, 2017, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <themoneyteam24.com> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 May 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@themoneyteam24.com. Also on May 4, 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 30, 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 is a company owned by the champion boxer Floyd Mayweather, Jnr., that operates in the entertainment industry. On or in connection with its products and services in this industry, Complainant has registered its THE MONEY TEAM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,377,794, first use May 5, 2012, filed May 25, 2012, registered July 30, 2013). See Compl., at Attached Annex 8. Complainant also has a website at www.themoneyteam.com which promotes clothing ,sports training equipment and associated goods and services. Respondent’s <themoneyteam24.com> domain name incorporates the THE MONEY TEAM mark entirely, less the spaces, and simply adds the number “24” and the “.com” generic top-level domain (“gTLD”), creating confusing similarity with the mark.
Respondent cannot establish rights and legitimate interests in the domain name. Respondent is not commonly known by the domain name due to the information given in the WHOIS of record. Furthermore, Respondent has no authorization from Complainant to operate the corresponding website.
Respondent registered and used the domain name in bad faith. The domain name resolves to a website that includes Complainant’s other trademark and logo, TOUGH TIMES DON’T LAST TOUGH PEOPLE DO TMT THE MONEY TEAM , in association with a login page, demonstrating bad faith under Policy ¶ 4(b)(iv) as well as Policy ¶ 4(a)(iii) bad faith because the inclusion of the mark/logo imputes actual knowledge to Respondent. It also gives the impression that the website is owned by Complainant.
B. Respondent
Respondent did not file a Response.
1. Complainant is a United States company owned by the champion boxer Floyd Mayweather, Jnr., and engaged in the entertainment industry.
2. Complainant has registered its THE MONEY TEAM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,377,794, first use May 5, 2012, filed May 25, 2012, registered July 30, 2013).
3. Respondent registered the <themoneyteam24.com> domain name on January 11, 2017.
4. The domain name resolves to a website that includes Complainant’s other trademark and logo, TOUGH TIMES DON’T LAST TOUGH PEOPLE DO TMT THE MONEY TEAM, in association with a login page and which gives the impression that the website is owned by Complainant.
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.”).
Panel Note: Supported Language Request
Complainant requests that the language of this administrative proceeding proceed in the English language. Complainant makes this request in light of the Russian language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Russian language included in the Registration Agreement. 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). Further, the Panel may weigh the relative time and expense in enforcing the Russian language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant argues that Respondent’s website, service agreement, and domain name are all in English; when Respondent responded to Complainant regarding its request for the true domain name registrant, all of its responses were in English; and the entity that owns Respondent Regional Network Information Center, JSC dba RU-CENTER is HostingCommunity, Inc., which is incorporated in the British Virgin Islands where English is the official language.
Accordingly, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in the English language.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has registered its THE MONEY TEAM mark with the USPTO (e.g., Reg. No. 4,377,794, first use May 5, 2012, filed May 25, 2012, registered July 30, 2013). See Compl., at Attached Annex 8. It is now well established that USPTO registrations confer trademark rights on a complainant. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Where a valid trademark registration exists, rights are seen to date back to the mark’s filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Accordingly, the Panel finds that Complainant has established its registered trademark rights in the THE MONEY TEAM mark and that they date back to May 25, 2012.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ABBVIE mark. Complainant submits that the <themoneyteam24.com> domain name incorporates its THE MONEY TEAM mark entirely, less the spaces, and simply adds the number “24” and the “.com” gTLD, creating confusing similarity with the mark. Eliminating spacing and adding “.com” are both considered irrelevant alterations in an inquiry as to identity or confusing similarity with a mark. See generally Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Additionally, adding numbers may also be considered nondistinguishing. See generally Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s addition of “24” does not remove the domain name from the realm of confusing similarity under Policy ¶ 4(a)(i).
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 THE MONEY TEAM mark and to use it in its domain name adding the number “24”;
(b) Respondent registered the domain name on January 11, 2017;
(c) The domain name resolves to a website that includes Complainant’s other trademark and logo, TOUGH TIMES DON’T LAST TOUGH PEOPLE DO TMT THE MONEY TEAM, in association with a login page and which gives the impression that the website is owned by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the domain name due to the information given in the WHOIS of record. Furthermore, Respondent has no authorization from Complainant to operate the corresponding website. Both arguments have been successful under Policy ¶ 4(c)(ii). 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). The WHOIS lists “Privacy protection service - whoisproxy.ru.” Therefore, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
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 clear that to establish 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 argues that Respondent registered and used the domain name in bad faith because Respondent includes Complainant’s other mark, TOUGH TIMES DON’T LAST TOUGH PEOPLE DO TMT THE MONEY TEAM, in association with a login page, on the resolving website, demonstrating bad faith under Policy ¶ 4(b)(iv) as well as Policy ¶ 4(a)(iii) bad faith because the inclusion of the mark/logo imputes actual knowledge to Respondent. A general intent to confuse Internet users has been considered bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). Complainant includes a trademark registration for the TOUGH TIMES DON’T LAST TOUGH PEOPLE DO TMT THE MONEY TEAM mark at Attached Annex 16. The Panel agrees that Respondent clearly intended to confuse Internet users by incorporating the exact mark of Complainant on the resolving website—potentially creating what would be considered a “doppelganger” page for the purpose of gathering identifying information—indicating bad faith registration and use of the domain name under Policy ¶¶ 4(b)(iv) and (a)(iii).
Secondly, Complainant submits Respondent had actual knowledge of Complainant’s trademark under Policy ¶ 4(a)(iii). Actual knowledge may be shown through a totality of circumstances. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Like Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc., Respondent includes Complainant’s intellectual property on the resolving website of the <themoneyteam24.com> domain name. The Panel agrees that this, coupled with the inclusion of Complainant’s mark in full, leads to the inference that Respondent had actual knowledge of the THE MONEY TREE trademark when registering/using the domain name under Policy ¶ 4(a)(iii).
Thirdly, 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 THE MONEY TREE 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 <themoneyteam24.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 1, 2017
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