Wiluna Holdings, LLC v. Janus Smits
Claim Number: FA1806001791303
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Janus Smits (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4.us>, registered with Network Solutions 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2018; the Forum received payment on June 13, 2018.
On June 13, 2018, Network Solutions Inc. confirmed by e-mail to the Forum that the <clips4.us> domain name is registered with Network Solutions Inc. and that Respondent is the current registrant of the names. Network Solutions Inc. has verified that Respondent is bound by the Network Solutions Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@clips4.us. Also on June 18, 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 July 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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 made the following contentions
Complainant, Wiluna Holdings, LLC, is the owner and operator of the website operating at <www.clips4sale.com>, which features adult-entertainment oriented media. Complainant uses its CLIPS4SALE.COM mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,508,680, registered Sept. 30, 2008). See Amend. Compl. Ex. 1. Respondent’s <clips4.us> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark because it merely appends the country-code top-level domain (“ccTLD”) “.us.” to CLIPS4, the dominant portion of the trademark. The disputed domain name is also identical and/or confusingly similar to the other members of Complainants family of trademarks, namely CLIPS4SALE, CLIPS4, and CLIP4.
Respondent does not have rights or legitimate interests in the <clips4.us> domain name. Complainant has not licensed or otherwise authorized Respondent to use its CLIPS4SALE.COM mark or any part thereof in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Janus Smits” as the registrant. See Amend. Compl. Ex. 9. Respondent is not using the <clips4.us> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant and resolve to a website that diverts Internet users to third-party websites.
Respondent registered or is using the disputed domain name in bad faith because Respondent uses the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the owner and operator of the website at <www.clips4sale.com>, which features adult-entertainment oriented media.
2. Complainant has established its trademark rights in the CLIPS4SALE.COM mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,508,680, registered Sept. 30, 2008).
3. Respondent registered the <clips4.us> domain name on December 12, 2013;
4. Respondent uses the domain name to pass itself off as Complainant and resolve to a website that diverts Internet users to third-party websites.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it has rights in its CLIPS4SALE.COM mark through registration with the USPTO”) (e.g., Reg. No. 3,508,680, registered Sept. 30, 2008). See Amend. Compl. Ex. 1. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). As such, the Panel holds that Complainant has established its trademark rights in the CLIPS4SALE.COM mark under Policy ¶ 4(a)(i).
Complainant has also established, by evidence that the Panel accepts, that it has other related trademarks apart from CLIPS4SALE.COM, namely CLIPS4SALE, CLIPS4, and CLIP4 (referred to collectively as “Wiluna’s Marks”); that since at least as early as July 2003, Complainant has used the trademarks CLIPS4SALE and CLIPS4SALE.COM in connection with the CLIPS4SALE Website, and the associated media; and that Complainant’s <clips4sale.com> domain name was registered with Network Solutions, Inc. (“NSI”) at least as early as 2003,
The next question that arises is whether the disputed domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark. Complainant submits that Respondent’s <clips4.us> domain name is confusingly similar to Complainant’s marks because it merely appends the ccTLD “.us.” to the dominant portion of the CLIPS4SALE.COM mark, namely CLIPS4 and that internet users would therefore think that the domain name may well be related to the trademark and the goods and services offered under it. The addition of a TLD does not sufficiently distinguish a disputed domain name from a mark. CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <clips4.us> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark. The Panel has no doubt that internet users finding the disputed <clips4.us> domain name and the website to which it resolved would assume that they were connected or related to all of the Wiluna’s Marks and the website at <www.clips4sale.com> which was registered as early as 2003.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CLIPS4SALE.COM trademark and to use the dominant portion of it in its domain name;
(b) Respondent registered the <clips4.us> domain name on December 12, 2013;
(c) Respondent uses the domain name to pass itself off as Complainant and resolve to a website that diverts Internet users to third-party websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its CLIPS4SALE.COM mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(iii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <clips4.us> domain name lists “Janus Smits” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <clips4.us> domain name. The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent could not establish any rights or legitimate interests pursuant to Policy ¶ 4(c)(i);
(f) Complainant contends that Respondent is using the <clips4.us> domain name to pass itself off as Complainant and resolve to a website that diverts Internet users to third-party websites. Under Policy ¶ 4(c)(ii) and (iv), such use may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See 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.”). Complainant provided screenshots of the <clips4.us> website, which indicate that the site features pictures and videos related to Complainant’s adult-entertainment business as well as hyperlinks for third-party sites. See Amend. Compl. Ex. 10. Therefore, the Panel concludes that Respondent uses the domain name to pass itself off as Complainant and divert Internet users to third-party websites and holds that Respondent failed to use the domain name for a permissible use under the Policy.
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered or is using the <clips4.us> domain name in bad faith because Respondent is attempting to create confusion with Complainant’s marks and disrupt Complainant’s business for Respondent’s commercial gain. Registration and use of a domain name to disrupt a complainant’s business may support a finding of Policy ¶ 4(b)(iii) bad faith. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Further, use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein may evidence bad faith per Policy ¶ 4(b)(iv). See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). Complainant provided screenshots of the <clips4.us> website which features images, videos and links that compete with Complainant’s adult-entertainment business. See Amend. Compl. Ex. 10. Complainant contends that Respondent likely generates click-through advertisement revenue from the site. See Amend. Compl. p. 9. Therefore, the Panel finds that Respondent registered and/or used the domain name under Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the dominant portion of the CLIPS4SALE.COM mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the USTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clips4.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 13, 2018
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