Wiluna Holdings, LLC v. Odette Custom Media, LLC
Claim Number: FA1804001780212
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O'Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Odette Custom Media, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4dale.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2018; the Forum received payment on April 3, 2018.
On April 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <clips4dale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@clips4dale.com. Also on April 4, 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 April 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner and operator of a website operating at the URL <www.clips4sale.com>, which features entertainment-oriented media.
Complainant has used its CLIPS4SALE and CLIPS4SALE.COM marks in commerce since 2003.
Complainant holds a registration for the service mark CLIPS4SALE.COM, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,508,680, registered September 30, 2008.
Respondent registered the domain name <clips4dale.com> on or about February 13, 2015.
The domain name is confusingly similar to Complainant’s CLIPS4SALE.COM service mark.
Respondent does not have rights to or legitimate interests in the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its CLIPS4SALE.COM mark in any fashion.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to redirect Internet users to websites that compete with Complainant’s business.
Respondent’s use of the domain name disrupts Complainant’s business.
The domain name is an instance of typo-squatting.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in its CLIPS4SALE.COM service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <clips4dale.com> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM service mark. The domain name incorporates the mark in its entirety, with only a substitution of the letter “d” for the letter “s.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (finding that changing a single letter in the mark of a UDRP complainant in creating a domain name was insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <clips4dale.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <clips4dale.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the CLIPS4SALE.COM mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as
“Odette Custom Media, LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <clips4dale.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather to redirect Internet users to websites that compete with Complainant’s business. In the circumstances described in the Complaint, we may comfortably presume that Respondent profits commercially from this employment of the domain name. Such a use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum December 5, 2003) (finding that a respondent was not using domain names that were confusingly similar to the mark of a UDRP complainant for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where that respondent used the domain names to divert Internet users to a website that offered services that competed with those offered by that complainant under its marks).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the <clips4dale.com> domain name to redirect unsuspecting Internet users to websites operating in competition with the business of Complainant and that this use of the domain name disrupts that business. Under Policy ¶ 4(b)(iii), this use of the domain name stands as proof of Respondent’s bad faith in registering and using the domain name. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005):
Respondent is appropriating Complainant’s mark [in a domain name] to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s <clips4dale.com> domain name is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name with the aim of taking advantage of common typing errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting, without more, demonstrates bad faith in the registration of a domain name that is confusingly similar to the mark of a UDRP complainant. See, for example, Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum November 18, 2014) (finding that a respondent’s <unerarmour.com> domain name constituted typo-squatting of a UDRP complainant’s UNDER ARMOUR mark, which was evidence of bad faith registration of that domain name under Policy ¶ 4(a)(iii)).
The panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <clips4dale.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 4, 2018
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