national arbitration forum

 

DECISION

 

Brian Renner v. W.D.G. Ltd

Claim Number: FA1009001345100

 

PARTIES

Complainant is Brian Renner (“Complainant) Michigan, USA.  Respondent is W.D.G. Ltd (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <movieinsider.com>, registered with TUCOWS, INC.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2010.

 

On September 7, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <movieinsider.com> domain names is registered with TUCOWS, INC. and that Respondent is the current registrant of the names.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2010 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@movieinsider.com by e-mail.  Also on September 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:

 

1.      Respondent’s <movieinsider.com> domain name is confusingly similar to Complainant’s THEMOVIEINSIDER mark.

 

2.      Respondent does not have any rights or legitimate interests in the <movieinsider.com> domain name.

 

3.      Respondent registered and used the <movieinsider.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Brian Renner, has made significant use of the THEMOVIEINSIDER mark over a number of years.  Complainant uses the mark in connection with a wide variety of online entertainment services relating to movies, including reviews, news, trailers, photographs, posters, videos, and other movie-related information. 

 

Respondent registed the <movieinsider.com> domain name on August 10, 2000.  The disputed domain name resolves to a website that features pay-per-click hyperlinks and advertisements.

 

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."

 

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(e), 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 (Nat. Arb. 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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant does not own a trademark registration with a federal trademark authority.  The Panel determines that Complainant is not required to own a trademark registration with the a federal trademark agency in order to develop rights in the mark, as long as Complainant can establish common law rights in the mark.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant claims that it has used the THEMOVIEINSIDER.COM mark since July 2, 1999. Complainant registered the <themovieinsider.com> domain name on September 10, 2000.  Between May 1, 2007 and July 31, 2010, Complainant’s website received more than 28 million visits.  Respondent has not denied Complainant’s allegations.

The Panel determines that Complainant has established common law rights in its THEMOVIEINSIDER.COM mark for the purposes of the Policy. See Brian Renner v. Contactprivacy.com, FA 1335211, Aug. 26, 2010) (Complainant’s submissions minimally sufficient to establish rights in the THEMOVIEINSIDER.COM mark for the purposes of the Policy); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).

 

Complainant alleges that Respondent’s <movieinsider.com> domain name is confusingly similar to Complainant’s THEMOVIEINSIDER.COM mark.  The disputed domain name simply removes the term “the” from Complainant’s mark.  The Panel finds such an alteration does not distinguish the disputed domain name from Complainant’s mark.  See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark).  Therefore, the Panel finds Respondent’s <movieinsider.com> domain name is confusingly similar to Complainant’s THEMOVIEINSIDER.COM mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.  Once Complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its allegations and Respondent has failed to provide a Response to these proceedings.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Despite Respondent’s failure to respond, the Panel will examine the record according to the factors contained in Policy ¶ 4(c) to determine whether Respondent has rights or legitimate interests. 

 

Complainant indicates that the WHOIS record for the <movieinsider.com> domain name identifies the registrant as Respondent, W. D. G. Ltd.  The failure of the WHOIS information to indicate that Respondent is commonly known by the disputed domain name suggests that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant asserts that Respondent’s disputed domain name resolves to an inactive website.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also  Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The disputed domain name resolves to a website that features pay-per-click hyperlinks and advertisements.  The Panel finds Respondent’s use of the disputed domain name for the purpose of receiving click-through fees is not a bona fide offering goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent is not making an active use of the disputed domain name.  The Panel finds that Respondent’s failure to make active use of its <movieinsider.com> domain name is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

Since Respondent receives click-through fees from the links displayed on its resolving website, Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the sponsorship or affiliation with Complainant.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that Complainant has satisfied 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 <movieinsider.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 23, 2010

 

 

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