Donna Morgan LLC v. Ryan G Foo / PPA Media Services
Claim Number: FA1506001622356
Complainant is Donna Morgan LLC (“Complainant”), represented by Thomas M. Furth of Kudman Trachten Aloe LLP, New York, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <donnamorgan.com>, registered with Internet.bs Corp.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2015; the Forum received payment on June 2, 2015.
On June 9, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <donnamorgan.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 June 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2015 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@donnamorgan.com. Also on June 16, 2015, 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 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant uses the DONNA MORGAN mark in connection with an e-commerce website. Complainant has registered the DONNA MORGAN mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,498,722, registered August 2, 1988), establishing its rights in the mark. Respondent’s <donnamorgan.com> domain name is identical to the DONNA MORGAN mark because it merely eliminates spacing and adds the generic top-level domain (“gTLD”), “.com.”
(ii) Respondent has no rights or legitimate interests with respect to the <donnamorgan.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has not utilized the <donnamorgan.com> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the disputed domain name has redirected Internet users to <shop.nordstrom.com> and <neimanmarcus.com>. It is presumed that such redirected nets Respondent commercial profit via affiliate fees or click-through fees.
(iii) Respondent has registered and used the <donnamorgan.com> domain name in bad faith. Respondent’s redirection to sites which compete with Complainant constitutes bad faith per Policy ¶ 4(b)(iii). Further, Respondent’s actions evidence an intent to profit from the confusion associated with Complainant’s mark under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <donnamorgan.com> domain name was registered on October 24, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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(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.”).
Complainant uses the DONNA MORGAN mark in connection with an e-commerce website. Complainant purports to have registered the DONNA MORGAN mark with the USPTO (Registry No. 1,498,722, registered August 2, 1988), and argues that its Policy ¶ 4(a)(i) rights have thus been established. While Complainant and Respondent are noted as operating in different countries, panels have not found such circumstances as preventing a finding of rights under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, the Panel finds that Complainant has rights in the DONNA MORGAN mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <donnamorgan.com> domain name is identical to the DONNA MORGAN mark, notably because it merely eliminates spacing and adds the gTLD, “.com.” Previous panels have found such alterations unconvincing in distinguishing a disputed domain name from a registered mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Thus, the Panel finds that Respondent’s <donnamorgan.com> domain name is identical/confusingly similar to the DONNA MORGAN mark pursuant to Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant posits that Respondent has no rights or legitimate interests with respect to the <donnamorgan.com> domain name. First, the Panel sees that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Here, the relevant WHOIS information lists registrant of record for the disputed domain name as, “Ryan G Foo / PPA Media Services.” Further, Respondent’s failure to submit evidence which would enable the Panel to make such a finding as “commonly known by” under Policy ¶ 4(c)(ii) convinces this Panel that there is no basis to make such a finding. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Further, Complainant argues that Respondent has not utilized the <donnamorgan.com> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Complainant contends that the disputed domain name has redirected Internet users to <shop.nordstrom.com> and <neimanmarcus.com>. Complainant presumes that such redirection nets Respondent commercial profit via affiliate fees or click-through revenue. Previous panels have found such use in a respondent’s behavior to demonstrate no rights or legitimate interests. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of goods or services); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Although Complainant does not seem to have provided evidence showing Respondent’s use, in view of Respondent's failure to submit a response, the Panel accepts Complainant's such allegations and inferences as true. And thus, the Panel finds that Complainant has established Respondent’s failure to evince a bona fide offering of goods or services or any legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s redirection to sites which compete with Complainant constitutes bad faith per Policy ¶ 4(b)(iii) and an intent to profit from the confusion associated with Complainant’s mark under Policy ¶ 4(b)(iv). Complainant notes, as described above, that Respondent’s website allegedly redirects Internet users to <shop.nordstrom.com> and <neimanmarcus.com>. Complainant presumes that such redirection nets Respondent commercial profit via affiliate fees or click-through revenue.
The Panel notes, however, that Complainant has not provided evidence showing Respondent’s use for the Panel’s consideration. It is of consensus that a panel may perform an independent search to reach the right decision. See Paragraph 4.5 of WIPO Overview 2.0 ([A] panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. [T]his may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.). The Panel has performed an independent search to clarify the fact by way of making a visit to the website to which the disputed domain name is resolved. As a result, the Panel accepts Complainant’s contentions as true, and thus finds that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <donnamorgan.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 22, 2015
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