Sean William McLoughlin p/k/a JackSepticEye v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1802001771274
Complainant is Sean William McLoughlin p/k/a JackSepticEye (“Complainant”), represented by Jordan Susman of Harder LLP, California, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jacksepticeye.com>, registered with Internet Domain Service 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 February 9, 2018; the Forum received payment on February 9, 2018.
On February 12, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <jacksepticeye.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service 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 February 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2018 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@jacksepticeye.com. Also on February 14, 2018, 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 12, 2018, 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, Sean William McLouglin, who has been professionally known as JackSepticEye since at least 2012, is a producer, videogame commentator, online gamer, and internet personality, known primarily for his comedic “Let’s Play” series on video games and vlogs on YouTube, where his JackSepticEye channel has over 17 million subscribers. Uploads posted by Complainant on his JackSepticEye channel on YouTube routinely receive tens of millions of views, and have been viewed more than 8.6 billion times. Complainant owns a registration for the JACKSEPTICEYE mark with the Irish Patents Office (“IPO”) (Reg. No. 257293 registered Jan. 24, 2017). Complainant also has pending trademark applications for the same mark with the World Intellectual Property Organization (“WIPO”) (Ser. No. 1860034 filed Sep. 28, 2017) and the Canadian Intellectual Property Office (“CIPO”) (Ser. No. 1860034 filed Sep. 28, 2017). Complainant also has common law rights in the mark based on the popularity of Complainant’s business. Respondent’s at issue domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has never granted authorization or license to Respondent for the use of its mark, nor is Respondent commonly known by the JACKSEPTICEYE mark. Further, Respondent makes no active use of the website associated with the domain name at issue. Rather, Respondent’s website appears to be a parked page for advertising internet games and gamer services unrelated to Complainant. Respondent’s conduct is clear in that Respondent is misleadingly diverting internet users searching for Complainant.
iii) Respondent’s registration and use of the disputed domain name is in bad faith as Respondent profits from redirecting internet traffic from Complainant’s website to other websites containing a varying list of sponsored links.
B. Respondent
Respondent did not submit a response. The Panel notes, according to the WHOIS information of record, Respondent registered the <jacksepticeye.com> domain name on April 21, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Complainant holds common law rights in the JACKSEPTICEYE mark. 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(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.”).
Complainant claims rights to the JACKSEPTICEYE mark through its registration with the IPO (Reg. No. 257293 registered Jan. 24, 2017). Registrations of a mark with a governmental authority is sufficient to establish rights to a mark. See The Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL, FA 1622018 (Forum July 14, 2015) (holding that “Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.”). As such, the Panel finds Complainant has demonstrated sufficient rights to its mark through registration with the IPO for the purposes of Policy ¶ 4(a)(i).
Complainant also claims to hold common law rights in the JACKSEPTICEYE mark. Common law rights may be demonstrated through evidence of secondary meaning, and secondary meaning can be evidenced through, inter alia, length of use, and media recognition. See Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in Sept. 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). Here, Complainant claims that it has used its JACKSEPTICEYE mark in commerce as part of his highly successful internet gamer business since 2012. Further, by the time of Respondent’s April 21, 2014, registration of the disputed domain name, Complainant avers that it was a well-established internet gamer, whose online YouTube channel named JackSepticEye was receiving more than 20 million views each month. Complainant further indicates Complainant is a frequent subject of news reporting regarding online gamers and YouTube channel superstars. See Compl. Annex Exs. E & G. Accordingly, the Panel finds Complainant has established common law rights to its mark.
Next, Complainant argues Respondent’s <jacksepticeye.com> domain name is identical to its JACKSEPTICEYE mark as it merely adds a gTLD to the entire mark. Incorporating a complainant’s rightful mark and a gTLD does not typically distinguish a domain name from a finding of identical or confusing similarity. See 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.”). Here, Complainant indicates Respondent’s domain name incorporates its JACKSEPTICEYE mark, and adds the gTLD “.com.” Consequently, the Panel finds Respondent’s at issue domain name to be identical to Complainant’s mark under 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends Respondent has no rights or legitimate interests in the <jacksepticeye.com> domain name as Respondent is not commonly known by the domain name. Absent a response, WHOIS information and a lack of authorization or license from a complainant to use its mark in a disputed domain name may indicate a respondent is not commonly known by the domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). Here, the WHOIS information lists the registrant as “Domain Admin / Whois Privacy Corp.” See Compl. Ex. D. Complainant also avers Respondent has no license or authorization to use its mark. Therefore, the Panel finds Respondent is not commonly known by the at issue domain name.
Further, Complainant asserts Respondent is not using the <jacksepticeye.com> domain name in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use as the domain name resolves to an inactive parked webpage. Past Panels have found against respondents under Policy ¶¶ 4(c)(i) and (iii) where a disputed domain name is inactive, parked for advertising unrelated content to a complainant, or diverting internet users searching for complainant. See Thermo Electron Corp. v. Xu, FA 713851 (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)); see also TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, while Complainant specifies there is no active website associated with the disputed domain name, the resolving website appears to be a holding page advertising unrelated content against Complainant. See Compl. Ex. F. Consequently, the Panel finds Respondent hosts a parked webpage, which fails to confer rights and legitimate interests in the same under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent’s registration and use of the <jacksepticeye.com> domain name is in bad faith as Respondent uses the domain name to host a parked webpage. Using a disputed domain name to commercially benefit from click-through fees can be indicative of bad faith 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). Here Complainant provides a screenshot of the resolving webpage, which appears to display a varying list of sponsored links. See Compl. Ex. F. As a result, the Panel finds Respondent hosts a parked webpage in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jacksepticeye.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 19, 2018
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