DECISION
Wiluna Holdings, LLC v. Domain Administrator / Manila Industries Inc.
Claim Number: FA1806001793908
PARTIES
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Domain Administrator / Manila Industries Inc. (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4sales.com>, registered with Eurodns S.A., Eurodns S.A..
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on June 27, 2018; the Forum received payment on June 27, 2018.
On June 28, 2018, Eurodns S.A., Eurodns S.A. confirmed by e-mail to the Forum that the <clips4sales.com> domain name is registered with Eurodns S.A., Eurodns S.A. and that Respondent is the current registrant of the name. Eurodns S.A., Eurodns S.A. has verified that Respondent is bound by the Eurodns S.A., Eurodns S.A. 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 July 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@clips4sales.com. Also on July 5, 2018, 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 July 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant:
1. Complainant, Wiluna Holdings, LLC, owns and operates a website featuring adult-entertainment oriented media. Complainant uses the CLIPS4SALE.COM mark to provide and market its products and services. Complainant claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,508,680, registered on Sep. 30, 2008). See Amend. Compl. Ex. 1. Complainant also claims common law rights in the mark. Respondent’s <clips4sales.com> is confusingly similar as it contains Complainant’s CLIPS4SALE.COM mark in its entirety, and merely adds the letter “s.”
2. Respondent does not have rights or legitimate interests in the <clips4sales.com> domain name. Respondent is not permitted or licensed to use Complainant’s CLIPS4SALE.COM mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <clips4sales.com> domain name to divert Internet users to Respondent’s website where Respondent hosts pay-per-click advertisements which compete directly with Complainant’s business.
3. Respondent has registered and used the <clips4sales.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements to third party websites that compete with Complainant. Moreover, Respondent engages in typosquatting by adding the letter “s” to the CLIPS4SALE.COM mark.
B. Respondent:
1. Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Respondent’s <clips4sales.com> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <clips4sales.com> domain name.
3. Respondent registered or used the <clips4sales.com> domain name in bad faith.
DISCUSSION
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.”).
Identical and/or Confusingly Similar
Complainant claims rights in the CLIPS4SALE.COM mark based upon its registration with the USPTO. See Amend. Compl. Ex. 1. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). 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)). Complainant provides copies of its USPTO registrations for the CLIPS4SALE.COM mark (e.g., Reg. No. 3,508,680, registered on Sep. 30, 2008). See Amend. Compl. Ex. 1. Therefore, the Panel finds that Complainant has rights in the CLIPS4SALE.COM mark per Policy ¶ 4(a)(i).
Since the <clips4sales.com> domain name was created before Complainant’s USPTO filing date, Complainant claims common law rights in the CLIPS4SALE.COM mark dating back to at least 2003 for the purposes of Policy ¶ 4(a)(i). See Amend. Compl. Ex. 6. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant claims its goods and services are used by millions of people. In addition, consumers and the trade have come to recognize Complainant as the source of adult-entertainment media offered via its CLIPS4SALE.COM website. See Amend. Compl. Ex. 5. The Panel finds Complainant’s contentions to be sufficient, and concludes that Complainant has established common law rights by showing the CLIPS4SALE.COM mark has taken on a secondary meaning in association with Complainant’s business.
Next, Complainant asserts that the <clips4sales.com> domain name is confusingly similar to the CLIPS4SALE.COM mark as it contains the mark in its entirety, merely adding the letter “s”. Misspelling of a complainant’s mark, either by adding or removing letters, may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). The Panel agrees with Complainant and find that the <clips4sales.com> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <clips4sales.com> domain name. Specifically, Complainant contends Respondent is not licensed or permitted to use Complainant’s CLIPS4SALE.COM mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name 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.). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to use a complainant’s mark may support a finding that respondent does not have rights or legitimate interests in the disputed 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 notes that the WHOIS information of record identifies Respondent as “Domain Administrator / Manila Industries Inc.” See Amend. Compl. Ex. 9. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Next, Complainant contends that the Respondent fails to use the <clips4sales.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent uses the disputed domain name to host a parked webpage that contains links to third party websites which compete with Complainant’s business. Use of a domain name to host a parked webpage that contain third party links to Complainant’s competitors may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots of the disputed domain name’s resolving website which show multiple links to image and video content websites that directly compete with Complainant’s business. See Amend. Compl. Ex. 10. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Registration and Use in Bad Faith
Finally, Complainant contends Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant asserts Respondent merely adds the letter “s” to the CLIPS4SALE.COM mark. Thus, the Panel agrees and finds that Respondent’s addition of a single letter to Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clips4sales.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 10, 2018
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