Debbie Harris v. BRITT HARRISON / HARRISON PRODUCTIONS, LLC
Claim Number: FA1708001745466
Complainant is Debbie Harris (“Complainant”), represented by Debra Innocenti of Innocenti Jones PLLC, Texas, USA. Respondent is BRITT HARRISON / HARRISON PRODUCTIONS, LLC (“Respondent”), represented by David L. Oppenhuizen of Waters & Oppenhuizen PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanbeautypageant.com>, registered with Fastdomain Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2017; the Forum received payment on August 21, 2017.
On August 23, 2017, Fastdomain Inc. confirmed by e-mail to the Forum that the <americanbeautypageant.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain 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 August 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@americanbeautypageant.com. Also on August 25, 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 September 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant registered the AMERICAN BEAUTY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,266,757, registered July 17, 2007). Respondent’s <americanbeautypageant.com> domain name is confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and merely adds the descriptive term “pageants” to the mark, along with the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <americanbeautypageant.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to a different webpage, <northamericabeautypageant.com>, which offers competing beauty pageant services not related to Complainant.
iii) Respondent registered and uses the <americanbeautypageant.com> domain name in bad faith. Respondent disrupts Complainant’s business by attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's marks as the source of the website or of a product or service on that website. Further, Respondent had actual knowledge of Complainant’s mark as Respondent contacted Complainant prior to registering the mark in efforts to purchase the AMERICAN BEAUTY mark from Complainant, and even unsuccessfully attempted to have Complainant’s registration with the USPTO cancelled.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <americanbeautypageant.com> domain name on February 24, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 claims it registered the AMERICAN BEAUTY mark with the USPTO (e.g. Reg. No. 3,266,757, registered July 17, 2007). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “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. . . . Due to Complainant’s attached USPTO registration on the principal register, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the AMERICAN BEAUTY mark.
Complainant next argues that Respondent’s <americanbeautypageant.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and merely adds the descriptive term “pageants” to the mark, along with the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also 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.”). The Panel therefore finds that the <americanbeautypageant.com> domain name is confusingly similar to the AMERICAN BEAUTY mark under Policy ¶4(a)(i).
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.”). When a respondent fails to submit a response, all reasonable inferences made by a complainant are deemed to be true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent has no rights or legitimate interests in the <americanbeautypageant.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “BRITT HARRISON / HARRISON PRODUCTIONS, LLC” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the AMERICAN BEAUTY mark. Panels use these assertions as evidence of lacking rights or 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <americanbeautypageant.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage which appears to redirect users to a different website, <northamericabeautypageant.com>, purporting to offer beauty pageant services. The Panel agrees with Complainant that Respondent offers competing beauty pageant services.
Complainant argues that Respondent registered and uses the <americanbeautypageant.com> domain name in bad faith, disrupting Complainant’s business by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name to disrupt a complainant’s business and trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant’s provided screenshot shows that Respondent offers competing beauty pageant services separate from those offered by Complainant. The Panel agrees with Complainant that Respondent disrupts its business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s AMERICAN BEAUTY mark. A complainant may use arguments of actual knowledge to evince 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 contends that Respondent must have had actual knowledge of the mark as Respondent contacted Complainant prior to registering the mark in efforts to purchase the AMERICAN BEAUTY mark from Complainant, and even unsuccessfully attempted to have Complainant’s registration with the USPTO cancelled. The Panel agrees with Complainant that Respondent did have actual knowledge of Complainant’s rights in the AMERICAN BEAUTY mark, demonstrating bad faith under 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 <americanbeautypageant.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 29, 2017
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