Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd
Claim Number: FA1803001778986
Complainant is Daniel Handler (“Complainant”), represented by Stephen J. Strauss of BUCHALTER, California, USA. Respondent is Masanori Toriimoto / PLAN-B Co.,Ltd (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lemony-snicket-stuff.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 March 26, 2018; the Forum received payment on March 26, 2018.
On March 29, 2018, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <lemony-snicket-stuff.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 April 4, 2018, the Forum served the Complaint and all Annexes, including a Japanese Written Notice of the Complaint, setting a deadline of April 24, 2018 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@lemony-snicket-stuff.com. Also on April 4, 2018, the Japanese 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 30, 2018, 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, Daniel Handler, is an American author and playwright who is best known as the author (under the famous pseudonym Lemony Snicket) of the international publishing phenomenon A Series of Unfortunate Events. Complainant uses his LEMONY SNICKET mark in connection with goods and services, including printed and downloadable fiction books, puzzles, motion pictures, video and music recordings, computer games and entertainment services.
2. Complainant established common law rights in the mark by continuously using the mark since 1999 and by garnering secondary meaning in the mark. Complainant also has rights in the LEMONY SNICKET mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,432,562, Mar. 27, 2018). Respondent’s <lemony-snicket-stuff.com>[i] domain name is confusingly similar to Complainant’s mark because it adds two hyphens, the generic term “stuff” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
3. Respondent does not have rights or legitimate interests in the <lemony-snicket-stuff.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use the LEMONY SNICKET mark in any fashion. Respondent is also not commonly known by the domain name as the WHOIS information of record lists “Masanori Toriimoto / PLAN-B Co.,Ltd” as the registrant.
4. Respondent is not using the <lemony-snicket-stuff.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a Japanese language website promoting the sale of a hair removal medical laser.
5. Respondent registered and is using the domain name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s commercial website. Further, Respondent registered the domain name with full knowledge of Complainant’s rights in the LEMONY SNICKET mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law and trademark rights for the LEMONY SNICKET mark. Respondent’s domain name is confusingly similar to Complainant’s LEMONY SNICKET mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lemony-snicket-stuff.com> domain name and that Respondent registered and uses the domain name in bad faith.
Language of the Proceedings
The Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English
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 also has rights in the LEMONY SNICKET mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,432,562, Mar. 27, 2018). Registration of a mark with a trademark authority, such as the USPTO confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Thus, Complainant has established rights in the LEMONY SNICKET mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <lemony-snicket-stuff.com> domain name is confusingly similar to Complainant’s mark because it adds two hyphens, the generic term “stuff” and the gTLD “.com” to the fully incorporated mark. The addition of a generic term and a gTLD may not negate confusingly similarity between a domain name and a mark in which a complainant has rights. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The addition of hyphens to a mark is irrelevant under the Policy. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel holds that Respondent’s <lemony-snicket-stuff.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <lemony-snicket-stuff.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 alleges that Respondent does not have rights or legitimate interests in the <lemony-snicket-stuff.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use the LEMONY SNICKET mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a domain name. See 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 WHOIS information of record for <lemony-snicket-stuff.com> lists “Masanori Toriimoto / PLAN-B Co.,Ltd” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <lemony-snicket-stuff.com> domain name.
Further, Complainant contends that Respondent is not using the <lemony-snicket-stuff.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant has provided evidence that Respondent is using the domain name to divert Internet users to an unrelated commercial website. Use of a confusingly similar domain name to divert Internet users to an unrelated commercial website may not be considered a bona fide offering or fair use. See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Complainant provided screenshots of the domain name’s resolving website, which indicates the site promotes the sale of a hair removal medical laser. Therefore, the Panel holds that Respondent is using the domain name to divert Internet users to a commercial website and that Respondent does not use the domain name for a bona fide offering or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is diverting Internet users to Respondent’s commercial website and disrupting Complainant’s business. Use of a domain name to disrupt a complainant’s business may evidence bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant has provided screenshots of the <lemony-snicket-stuff.com> website showing that the site promotes the sale of a laser hair removal device. Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent registered the domain name with full knowledge of Complainant’s rights in the LEMONY SNICKET mark. Actual knowledge of a complainant's rights in a mark prior to registering a 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). A respondent is presumed to have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s LEMONY SNICKET mark has created significant good will and consumer recognition around the world and was first used by Complainant in 1999. Therefore, due to the fame of Complainant’s mark, the Panel holds that Respondent had actual knowledge of Complainant’s rights when Respondent incorporated the mark exactly in the <lemony-snicket-stuff.com> 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 <lemony-snicket-stuff.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 7, 2018
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