Audible, Inc. v. Teme Sejko / Audible Credits
Claim Number: FA1703001721883
Complainant is Audible, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Teme Sejko / Audible Credits (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <audiblecredits.com>, (‘the Domain Name’) registered with Tucows Domains Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2017; the Forum received payment on March 15, 2017.
On March 16, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <audiblecredits.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@audiblecredits.com. Also on March 16, 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 April 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarized as follows:
Complainant is the leading provider of premium digital spoken audio information and entertainment. The AUDIBLE and AUDIBLE.COM trade marks are registered in various countries including the USA. Audible credits are personal allotments of audiobooks that are earned either monthly or annually by individuals with an Audible membership. Audible uses a figurative logo to promote its business (‘the Audible Logo’). Complainant’s parent amazon.com uses the Amazon Logo to promote its business.
The Domain Name incorporates Complainant’s well known AUDIBLE and AUDIBLE.COM trade marks in their entirety adding only the generic term ‘credits’ (which relates directly to Complainant’s business) and in the case of AUDIBLE the generic TLD .com. These changes are not sufficient to distinguish the Domain Name from Complainant’s well known marks. Accordingly Complainant has satisfied the first limb of the Policy.
Respondent has not used the Domain Name in connection with a bona fide offering of goods and services, is not making a non commercial fair use of the Domain Name and has never been legitimately or commonly known as or referred to as AUDIBLE, AUDIBLE.COM or any variation thereof. Respondent is not affiliated with Complainant in any way or licensed to use Complainant’s marks and is not an authorized distributor. Respondent does not have a legitimate interest in the Domain Name.
On March 8, 2017 prior to Complainant’s initiation of a take down request the landing page for the Domain Name was an online retail storefront saturated with Complainant’s branding including at least 7 instances of the Audible Logo and at least 6 instances of the Amazon Logo. Respondent used Audible Credits as its brand name and sole identity, even in the copyright legend ‘© 2017 Audible Credits’. Following Complainant’s takedown requests Respondent updated its site, but still prominently displayed Complainant’s trade marks and still used Audible Credits as its brand name and sole identity.
Respondent’s adoption of Complainant’s name, logos and graphics to promote Respondent’s online retail business is calculated and likely to confuse and mislead the public as to Respondent’s relationship with Complainant and constitutes passing off. This is not a fair or otherwise legitimate use. Changes made to a Respondent’s site after receiving notice of Complainant’s objections do not resolve passing off issues or transform Respondent’s use into a legitimate or bona fide use.
Moreover Respondent appears to be selling Audible credits and promotional claim codes not ‘audible.com ® gift cards’ as shown. The green images purporting to be genuine gift cards are fake/counterfeit. Misrepresenting the character of Respondent’s goods and failing to disclose transfer restrictions applicable to credits and promotional claim codes is calculated and likely to deceive customers and as such violates US federal and state laws intended to protect customers from false and misleading product data and is not a bona fide offering of goods and services or any legitimate non-commercial fair use under the Policy. Selling Audible credits or promotional claim codes violates Audible’s terms and conditions prohibiting release or transfer for value. Using the Domain Name to violate Complainant’s terms of service cannot be a bona fide offering of goods and services. Respondent has no rights or legitimate interests in the Domain Name.
Respondent registered and used the Domain Name in bad faith. The use of Complainant’s logo and graphics shows actual knowledge of Complainant and its business. Respondent has created the false impression that its services are offered or endorsed by Complainant. This conduct of diversion shows bad faith registration and use pursuant to Policy 4 (b)(iv). Furthermore Respondent is using the Domain Name to disrupt Complainant’s business by fraudulently diverting audiobook revenues and facilitate violation of Complainant’s terms and conditions which constitutes bad faith.
Finally Respondent’s use of a privacy shield for a commercial web site reflects bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns registered trade marks in the United States for AUDIBLE and AUDIBLE.com relating to its business of audio information and entertainment with first use recorded as 1997. It has a system of credits which can be used to obtain audio books.
The Domain Name registered in 2017 has been used to offer credits for audio books on a web site which uses Complainant’s trade marks and the Audible Logo.
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 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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's AUDIBLE mark (which is registered in USA for audio entertainment and related retail services and has been used since 1997), the generic term ‘credits’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by complainant). The Panel agrees that the addition of the generic term ‘credits’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact it may add to confusion as Complainant operates a system of credits for its audio books.
The gTLD .com does not serve to distinguish the Domain Name from the AUDIBLE mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent’s uses Complainant’s AUDIBLE mark and the Audible Logo. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that the site was set up for commercial benefit to compete with Complainant using the latter's intellectual property rights. The web site attached to the Domain Name uses Complainant's word mark AUDIBLE and the Audible Logo mark in a prominent fashion. Respondent is using the site in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Benjamin FA 944242 (Forum May 11, 2007) finding that Respondent's use of a confusingly similar domain name to advertise real estate services which competed with Complainant's business did not constitute a bona fide use of goods and services.) Further the site is likely to be mistaken as an official site of Complainant. See KMART of Mich., Inc. v Cone, FA 655014 (Forum Apr. 25, 2006)(The panel found the respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i) or a legitimate non commercial or fair use pursuant to Policy 4 ( c ) (iii).
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant also alleges that Respondent's use of the site attached to the Domain Name is commercial and it is using it to make a profit by competing with Complainant in a confusing and disruptive manner. In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant, as it offers audio credit services similar to those offered by Complainant under a Domain Name containing Complainant’s AUDIBLE mark with use of Complainant’s Audible Logo. The use of Complainant's AUDIBLE word and the Audible Logo mark on Respondent's web site shows that Respondent is aware of Complainant and its business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
The Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii). As such, there is no need to consider further allegations of bad faith by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <audiblecredits.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne , Panelist
Dated: April 13, 2017
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