Rosaura Sandoval v. abdul arifin / Ginger Storm
Claim Number: FA1808001800099
Complainant is Rosaura Sandoval (“Complainant”), represented by Aaron Arce Stark of Arce Stark Law, LLC, Washington D.C., USA. Respondent is abdul arifin / Ginger Storm (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rosaurasandoval.com> and <rosaurasandovalblog.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2018; the Forum received payment on August 6, 2018.
On August 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@rosaurasandoval.com, postmaster@rosaurasandovalblog.com. Also on August 20, 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 September 12, 2018 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant engages in the business of photography and is the owner of the “Rosaura Studios Photography” business in the State of California. Complainant owns the rights to the ROSAURA SANDOVAL as a common law trademark and has used the mark (Complainant’s personal name) as a trade name since 2008. The mark has since gained distinctiveness and secondary meaning among Complainant’s clients and within the photography industry. Respondent’s <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names are identical to Complainant’s mark.
Respondent has no rights or legitimate interests in the <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names. Complainant has not authorized or otherwise permitted Respondent to use the mark for any purpose. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <rosaurasandoval.com> domain name to sell wedding dresses, a field related to Complainant’s industry. Respondent uses the <rosaurasandovalblog.com> domain name to host a website offering South London escort services.
Respondent registered and uses the <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names in bad faith. Respondent uses the domain names to purportedly sell, respectively, wedding dresses and South London escort services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a professional photographer and the owner of the “Rosaura Studios Photography” business in the State of California.
2. Complainant has established its common law trademark rights to the ROSAURA SANDOVAL mark.
3. Respondent registered the <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names on July 30, 2004 and July 14, 2009, respectively.
4. Respondent uses the <rosaurasandoval.com> domain name to sell wedding dresses, a field related to Complainant’s industry. Respondent uses the <rosaurasandovalblog.com> domain name to host a website offering South London escort services.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant argues that both domain names were purchased in the same month of their respective years, and both websites were updated a day apart from each other. See Compl. Exs. C & D. Further, both websites contain a strikingly similar design and content, although the content is otherwise different. Additionally, the servers connected to the IP addresses of the domain names are both located in California. See Compl. Exs. E & D. Moreover, the contact email addresses associated with the domain names are also associated with numerous other domain name registrations under various other registrant names, including Jill Warner. See Compl. Ex. G.
Having regard to those principles, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and the Complaint may proceed on that basis.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims it owns the rights to the ROSAURA SANDOVAL as a common law trademark and has used the mark (Complainant’s personal name) as a trade name since 2008. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant does not provide any evidence to support its assertion that the mark has acquired a secondary meaning, but the Panel notes that the purported trademark is the same as the personal name of the owner. The Panel therefore agrees with Complainant’s submissions and finds that Complainant has established sufficient rights in the mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ROSAURA SANDOVAL mark. Complainant argues that Respondent’s <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names are identical to Complainant’s mark. The Panel notes that while Complainant does not make this specific argument, the <rosaurasandoval.com> domain name appears to be identical to Complainant’s mark, and the other domain name adds the term “blog” to the otherwise identical mark. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <rosaurasandoval.com> domain name is identical, and the <rosaurasandovalblog.com> domain name is confusingly similar, to Complainant’s mark 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 names 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent clearly has no claim of right to either of the domain names. Complainant was the original registrant of the two domain names and used them in her business. The unchallenged evidence is that due to an oversight, Complainant did not renew their registration and the domain names lapsed and were taken up and retained by Respondent opportunistically. Respondent has thus taken Complainant’s ROSAURA SANDOVAL trademark and used it in the domain names to which it has no right, in one case without making any alteration to the mark and in the other case adopting the generic word “blog” that had been added to the mark to make the second domain name, a change that does not negate the confusing similarity between the domain name and Complainant’s mark, as internet users would naturally assume the domain name referred to a blog being used by Complainant in the course of her photography business;
(b) The <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names were initially registered on July 30, 2004 and July 14, 2009, respectively;
(c) Respondent uses the <rosaurasandoval.com> domain name to sell wedding dresses, a field related to Complainant’s industry, and uses the <rosaurasandovalblog.com> domain name to host a website offering South London escort services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names because it took them opportunistically when Complainant omitted to renew their registration. Complainant also contends that Respondent is not commonly known by the domain names. Where a response is lacking, relevant information to help determine that issue 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 “abdul arifin” as the registrant of the <rosaurasandoval.com> domain name, and “Ginger Storm” as the registrant of the <rosaurasandovalblog.com> domain name. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the ROSAURA SANDOVAL mark or either domain name. Panels may use these submissions 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 domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as the webpage offers services completely unrelated to those offered by Complainant. Using a confusingly similar domain name to promote unrelated services can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also 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). The Panel agrees with Complainant’s submission and relies on this as evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
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 has no rights or legitimate interests in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent uses the <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names purportedly to sell, respectively, wedding dresses and South London escort services. Using a complainant’s mark in a domain name for the purpose of trading upon its reputation and goodwill for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant does not provide any evidence to substantiate this claim. However, the Panel agrees with Complainant’s submission and relies on this to find Respondent’s bad faith per Policy ¶4(b)(iv).
Finally, 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 names using the ROSAURA SANDOVAL mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, it registered and used them 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 <rosaurasandoval.com> and <rosaurasandovalblog.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 17, 2018
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