Peabody Management, Inc. v. RAHEEM HARRIS
Claim Number: FA1702001717584
Complainant is Peabody Management, Inc. (“Complainant”), represented by Belinda Scrimenti, Illinois, USA. Respondent is RAHEEM HARRIS (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <peabodylittlerock.com>, registered with eNom, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2017; the Forum received payment on February 16, 2017.
On Feb 21, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <peabodylittlerock.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 February 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2017 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@peabodylittlerock.com. Also on February 22, 2017, 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 March 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant registered the THE PEABODY (e.g., Reg. No. 1,535,837, registered Apr. 18, 1989) and the three ducks design (e.g., Reg. No. Apr. 29, 1986, registered Jan. 11, 1994) mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <peabodylittlerock.com> mark is confusingly similar as it merely omits the word “the” from THE PEABODY mark, adds the geographic term “littlerock”, and adds the generic top-level domain “.com” (“gTLD”).
Respondent has no rights or legitimate interests in <peabodylittlerock.com>. No evidence exists to show that the registrant listed in the WHOIS registration information is commonly known by the THE PEABODY mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name. Respondent also doesn’t use the disputed domain for any bona fide offering of goods or services as the domain resolves to a blog that uses THE PEABODY mark and related design logo, however does not relate to services offered by Complainant. Additionally, Respondent uses Complainant’s mark to promote its own services and to draw users to its blog, actions that do not amount to a legitimate noncommercial or fair use, even if Respondent does not commercially benefit. Respondent, in its blog, includes links to unrelated third-party sites and promotes their services. Additionally, Respondent uses Complainant’s mark to promote its own services and to draw users to its blog, actions that do not amount to a legitimate noncommercial or fair use, even if Respondent does not commercially benefit. Respondent, also in its blog, includes links to unrelated third-party sites and promotes their services.
Respondent registered and uses the <peabodylittlerock.com> domain name in bad faith. Respondent uses the disputed domain name to promote third-parties who offer unrelated services to Complainant through links in its blog. Further, Respondent disrupts Complainant’s business for commercial gain by creating a likelihood of confusion with Complainant’s marks. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark as Complainant has used THE PEABODY mark for numerous years, and Respondent uses Complainant’s design on its webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the THE PEABODY mark.
Respondent registered the at-issue domain name after Complainant acquired rights in THE PEABODY.
Respondent uses the at-issue domain name to address a blog that uses THE PEABODY mark and related design, however the blog does not relate to services offered by Complainant. The blog site also contains links to third parties.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its THE PEABODY mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i).See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <peabodylittlerock.com> domain name contains Complainant’s entire THE PEABODY trademark less its space, suffixed with the geographic descriptor “littlerock.” A top-level domain name, here “.com,” is added to complete the domain name. However, the differences between the domain name and Complainant’s THE PEABODY mark are insufficient to materially distinguish one from the other under the Policy. Therefore, the Panel finds that Respondent’s <peabodylittlerock.com> domain name is confusingly similar to Complainant’s STATE FARM trademark. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “RAHEEM HARRIS” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <peabodylittlerock.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <peabodylittlerock.com> domain name addresses a blog site unrelated to Complainant or its trademark. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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).
Respondent’s <peabodylittlerock.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s confusingly similar domain name intentionally tricks internet users into mistakenly believing that there is an association between Complainant and Respondent. Using the domain name in this manner and for such purpose demonstrates Respondent’s bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Additionally and as mentioned above regarding rights and interests, the at-issue domain name address a webpage which displays various links unrelated to Complainant’s business. Such use of the domain name indicates Respondent’s bad faith registration and use of the <peabodylittlerock.com> domain name under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Finally, Respondent registered the <peabodylittlerock.com> domain name knowing that Complainant had trademark rights in the THE PEABODY trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark as well as from the <peabodylittlerock.com> webpage/blog’s use of Complainant’s trademark and three duck design logo. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <peabodylittlerock.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peabodylittlerock.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 22, 2017
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