Wiluna Holdings, LLC v. Zhichao Yang
Claim Number: FA1809001804996
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Zhichao Yang (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4sae.com>, registered with NameSilo, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 7, 2018; the Forum received payment on September 7, 2018.
On September 7, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <clips4sae.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 September 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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@clips4sae.com. Also on September 10, 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 October 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 states that it owns and operates a website featuring adult-entertainment oriented media. Complainant uses the CLIPS4SALE.COM trademark to provide and market its products and services. Complainant claims rights in the trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,508,680, registered on Sep. 30, 2008).
Complainant alleges that the disputed domain name <clips4sae.com> is confusingly similar to its trademark as it contains the CLIPS4SALE.COM trademark in its entirety, merely removing the letter “L”.
Respondent does not have rights or legitimate interests in the <clips4sae.com> domain name. Respondent is not permitted or licensed to use Complainant’s CLIPS4SALE.COM trademark 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 <clips4sae.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.
Respondent has registered and used the <clips4sae.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 removing the letter “L” in the CLIPS4SALE.COM trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the U.S. trademark registrations
- No. 3,508,680 CLIPS4SALE.COM (word), registered September 30, 2008, for services in class 41
- No. 3,554,200 CLIPS4SALE (word), registered December 30, 2008, for services in class 41
- No. 4,814,248 CLIP4 (word), registered September 15, 2015, for goods in class 9
- No. 4,800,900 CLIPS4 (word), registered August 25, 2015, for goods in class 9
Respondent registered the <clips4sae.com> domain name on March 13, 2018.
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.
Complainant has registered the CLIPS4SALE.COM trademark with the USPTO (Reg. No. 3,508,680, registered on September 30, 2008). The trademark is used for or in connection with a website featuring adult-entertainment oriented media.
The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The Panel further finds that the disputed domain name <clips4sae.com> is confusingly similar to Complainant’s trademarks CLIPS4SALE.COM and CLIPS4SALE as it contains the trademark in its entirety, and are only differentiated by removing the letter “L”, and - as to CLIPS4SALE - adding the gTLD .com.
Misspelling of a complainant’s trademark, either by adding or removing letters, may not sufficiently mitigate any confusing similarity between a disputed domain name and a trademark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”).
In this case, the misspelling is not enough to create something new, and the gTLD .com, which usually has no significance for the assessment of the similarity, in fact makes the similarity between Complainant’s trademark CLIPS4SALE.COM and the disputed domain name <clips4sae.com> even more obvious and clear.
The Panel concludes that the disputed domain name <clips4sae.com> is confusingly similar to the trademarks CLIPS4SALE.COM and CLIPS4SALE in which Complainant has rights (Policy ¶ 4(a)(i)).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); 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”).
In view of Respondent's failure to submit a response, the Panel will 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 the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Complainant argues that Respondent has no rights or legitimate interests in the <clips4sae.com> domain name. Specifically, Complainant contends that Respondent is not licensed or permitted to use Complainant’s trademarks, and is not commonly known by the disputed domain name.
Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). The Panel finds that the WHOIS information of record identifies Respondent as “Zhichao Yang ”, with no references to the CLIPS4SALE or CLIPS4SALE.COM trademarks. Furthermore, no information of the record indicates that Respondent was authorized to use Complainant’s CLIPS4SALE or CLIPS4SALE.COM trademarks.
Complainant further alleges Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The Panel notes that – from what is shown by Complainant - 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 cannot be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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).
Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name <clips4sae.com> which features click-through advertisements that redirect users to Complainant’s competitors.
Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links, is evidence of bad faith registration and use. See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”).
The Panel further notes that Respondent’s typosquatting of the disputed domain name compared with Complainant’s trademark rights, is a clear indication of the intention to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website. 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).”).
The Panel concludes that Respondent registered and uses the disputed domain name in 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 <clips4sae.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 12, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page