Wiluna Holdings, LLC v. HERMANN HOCHMAYER
Claim Number: FA1806001793174
Complainant is Wiluna Holdings, LLC ("Complainant"), represented by John O'Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is HERMANN HOCHMAYER ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xlips4sale.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 known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2018; the Forum received payment on June 21, 2018.
On June 25, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <xlips4sale.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 June 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@xlips4sale.com. Also on June 26, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 operates a website called CLIPS4SALE, which offers adult-oriented media. Complainant and its predecessors in interest have used the trademarks CLIPS4SALE and CLIPS4SALE.COM in connection with this website since 2003. Complainant owns U.S. registrations issued in 2008 for both marks in the form of standard character marks. Complainant also claims common-law rights in CLIPS4SALE.COM.
Respondent registered the disputed domain name <xlips4sale.com> in September 2017. The domain name is being used to redirect visitors to another website, <adultshoots.com>, which purports to offer networking services for models and talent managers. Complainant states that it has not granted Respondent permission to use the domain name, that Respondent is not commonly known by the domain name, and that Respondent is not using the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Complainant contends on the above grounds that the disputed domain name <xlips4sale.com> is confusingly similar to its marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 disputed domain name <xlips4sale.com> is identical to Complainant's registered CLIPS4SALE.COM mark, but for the substitution of a letter "X" for a letter "C". This substitution does not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Wiluna Holdings, LLC v. Zhichao Yang, FA 1791524 (Forum July 12, 2018) (finding <klips4sale.com> confusingly similar to CLIPS4SALE.COM); Wiluna Holdings, LLC v. Hermann Hochmayer, FA 1780199 (Forum May 4, 2018) (finding <clips4aale.com>, <clips4sape.com>, <clips4wale.com>, and <clips4eale.com> confusingly similar to CLIPS4SALE.COM and CLIPS4SALE). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent is using the disputed domain name to attract Internet users seeking Complainant's website and divert them to an unrelated website. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Wiluna Holdings, LLC v. Hermann Hochmayer, supra (finding lack of rights or legitimate interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith.
Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name that is a typographical variant of Complainant's mark and domain name, together with his use of that disputed domain name to attract Internet users seeking Complainant's website and divert them to an unrelated site for presumed commercial gain, is indicative of bad faith under the Policy. See, e.g., Wiluna Holdings, LLC v. Hermann Hochmayer, supra (finding bad faith registration and use under similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xlips4sale.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 19, 2018
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