Twitter, Inc. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)
Claim Number: FA1710001753603
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twitterjapanese.com>, registered with Launchpad.com 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2017; the Forum received payment on October 13, 2017.
On October 15, 2017, Launchpad.com Inc. confirmed by e-mail to the Forum that the <twitterjapanese.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com 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 October 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@twitterjapanese.com. Also on October 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 November 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant uses the TWITTER mark to operate a real-time global information network that allows the public to discover what’s happening in the world, share information, and connect to anyone, anywhere in real time. Complainant registered the TWITTER mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,422,235, registered Oct. 22, 2013). Respondent’s <twitterjapanese.com>[1] domain name is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety, adding only the geographic term/language name “Japanese” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <twitterjapanese.com> domain name. There is no evidence in the WHOIS information to suggest that Respondent is commonly known by the <twitterjapanese.com> domain name. Additionally, Respondent has never received any authorization or license from Complainant to use the TWITTER mark.
3. Respondent’s use of the TWITTER mark to identify itself and promote its services does not constitute a bona fide offer of goods and services or a legitimate noncommercial or otherwise fair use. Instead, Respondent offers fake Twitter, YouTube, Instagram and Facebook followers via the domain name in an attempt to pass off as Complainant and confuse and mislead Internet users otherwise seeking Complainant.
4. Respondent registered and continues to use <twitterjapanese.com> in bad faith. Respondent is using the domain name to disrupt Complainant’s business through the promotion of services that deceive Complainant’s users by artificially inflating popularity and viewership statistics. Further, Respondent registered the domain name with actual knowledge of Complainant’s mark. 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 holds trademark rights for the TWITTER mark. Respondent’s domain name is confusingly similar to Complainant’s TWITTER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <twitterjapanese.com> domain name and that Respondent registered and uses the 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(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 first component to Policy ¶ 4(a)(i) requires a complainant to demonstrate its rights in a trademark. Registration of a mark with the USPTO sufficiently establishes the required rights in a mark for purposes of Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant has registered its TWITTER mark with the USPTO as early as 2013 (e.g., Reg. No. 4,422,235, registered Oct. 22, 2013). Therefore, the Panel concludes that Complainant has established its rights in the TWITTER mark under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires Complainant to demonstrate the domain name in dispute is identical or confusingly similar to its TWITTER mark. Incorporating an entire mark, adding a geographic/generic term, and a gTLD do not serve to distinguish a trademark from a domain name in which a complainant has rights per Policy ¶ 4(a)(i). 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 Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Respondent’s <twitterjapanese.com> is confusingly similar to Complainant’s mark because it incorporates the entire TWITTER mark, adds the generic geographic term “japanese,” and adds the gTLD “.com.” Accordingly, the Panel finds the <twitterjapanese.com> domain name to be confusingly similar to the TWITTER mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <twitterjapanese.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <twitterjapanese.com> domain name as required by Policy ¶ 4(a)(ii). When a complainant does not authorize use of its marks for any purpose, or the WHOIS registrant information indicates a respondent is not commonly known by a domain name, this is evidence the respondent lacks rights or legitimate interests in the name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that . . . Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record lists registrant as “Domain Admin,” which does not reflect that Respondent has been commonly known by the <twitterjapanese.com> domain name. Further, Complainant has never authorized or licensed Respondent to use the TWITTER mark. The Panel concludes Respondent has no rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant argues that Respondent fails to use the <twitterjapanese.com> domain name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent offers fake Twitter, YouTube, Instagram and Facebook followers via the domain name. Fake follower accounts artificially inflate popularity statistics and as such are prohibited under Twitter’s Terms of Service which state “you may not impersonate others through the Twitter service in a manner that is intended to or does mislead, confuse, or deceive others” and enumerate “selling or purchasing followers” as grounds for locking or suspending an account. As such, Respondent’s use of the TWITTER mark to identify itself and promote its services is likely to confuse and mislead the public and constitutes passing off. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Therefore, this Panel finds that Complainant has sufficiently made its showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <twitterjapanese.com> domain name, Complainant’s official Japan account handle and Complainant’s Twitter Logos to impersonate and pass itself off as Complainant which is indicative of bad faith registration and use under Policy ¶ 4(b)(iv). Further, Respondent is using the domain name to promote services that deceive Complainant’s users by artificially inflating popularity and viewership statistics which is evidence of disruption to Complainant’s business under Policy ¶ 4(b)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”). Consequently, the Panel finds Respondent’s actions are sufficient to establish Policy ¶¶ 4(b)(iii) and (iv) bad faith.
In light of the fame and notoriety of Complainant's TWITTER mark, it is inconceivable that Respondent could have registered the <twitterjapanese.com> domain name without actual knowledge of Complainant's rights in the mark. Moreover, Respondent has incorporated the mark in its entirety in the domain name. The Panel agrees that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <twitterjapanese.com> domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied 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 <twitterjapanese.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 13, 2017
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