Wiluna Holdings, LLC v. Zhichao Yang
Claim Number: FA1809001804902
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4salke.com>, registered with NameSilo, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically September 6, 2018; the Forum received payment September 6, 2018.
On September 6, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <clips4salke.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC verified that Respondent is bound by the NameSilo, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@clips4salke.com. Also on September 7, 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 October 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant, Wiluna Holdings, LLC, is the owner of <clips4sale.com>, which features adult-entertainment oriented media. Complainant has rights in the CLIPS4SALE.COM mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,508,680, registered Sep. 30, 2008). See Amend. Compl. Ex. 1. Respondent’s <clips4salke.com> is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s CLIPS4SALE.COM, and is only differentiated by the minor misspelling of an additional “k”.
Respondent lacks rights and legitimate interests in the <clips4salke.com> domain name. Respondent is not authorized to use Complainant’s CLIPS4SALE.COM mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to divert Internet users, for commercial gain, from Complainant’s website to another website that features hyperlinks in direct competition with Complainant.
Respondent registered and uses the <clips4salke.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it features hyperlinks to Complainant’s competitors. Further, Respondent engages in typosquatting.
B. Respondent’s Contentions in this Proceeding:
Respondent failed to submit a response. The Panel notes that Respondent created the <clips4salke.com> domain name January 19, 2018, some ten years after Complainant acquired rights in its protected mark. See Amend. Compl. Ex. 9.
FINDINGS
Complainant established rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in either the mark or the disputed domain name containing Complainant’s protected mark.
Respondent registered a disputed domain name containing Complainant’s protected mark in its entirety, adding a sole consonant to the mark, and the disputed domain name is confusingly similar to Complainant’s mark.
Respondent registered and uses the disputed domain name containing Complainant’s protected mark in its entirety and did so 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant has rights in the CLIPS4SALE.COM mark based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registration for the CLIPS4SALE.COM mark (e.g., Reg. No. 3,508,680, registered Sep. 30, 2008). See Amend. Compl. Ex. 1. Therefore, the Panel finds that Complainant sufficiently demonstrated its rights in the CLIPS4SALE.COM mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <clips4salke.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s CLIPS4SALE.COM mark, and is differentiated only by the minor misspelling of an additional “k”. Misspelling of a complainant’s mark, either by adding or removing letters, does not mitigate any confusing similarity between the disputed domain name and the mark under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’). Here, Respondent wholly incorporates Complainant’s CLIPS4SALE, which is only differentiated by the minor misspelling of an additional “k”. Accordingly, the Panel finds that Respondent’s <clips4salke.com> domain name is confusingly similar to Complainants mark under a Policy ¶ 4(a)(i) evaluation.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark, which is contained within it in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent lacks rights and legitimate interests in the <clips4salke.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the CLIPS4SALE.COM mark. Where Respondent files no response, WHOIS information may be used to identify a respondent under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “Zhichao Yang.” Furthermore, nowhere in the record is there any suggestion that Complainant authorized Respondent to use Complainant’s CLIPS4SALE.COM mark. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges Respondent fails to use the <clips4salke.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent attempts to divert Internet users, for commercial gain, from Complainant’s website to another website that features hyperlinks in direct competition with Complainant. Use of a disputed domain name to divert internet users from a complainant’s website to a respondent’s website that features links to a competing website may not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provides screenshots of the disputed domain name’s resolving website, which contains hyperlinks to competing adult-oriented websites. See Amend. Compl. Ex. 10. Accordingly, the Panel finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests to the disputed domain name that contains Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Next, Complainant claims that Respondent registered and uses the <clips4salke.com> domain name in bad faith. Specifically, Complainant argues Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s resolving website where it redirects users to competing third-party websites. Use of a disputed domain name to feature hyperlinks to a complainant’s competitors may be evidence of bad faith under a Policy ¶¶ 4(b)(iii) and/or (iv) analysis. See RetailMeNot, Inc. v. Above.com Domain Privacy, FA 1714474 (Forum Mar. 21, 2017) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)(iv)”). Complainant provides screenshots of the disputed domain’s resolving website, which contains hyperlinks to competing adult-oriented websites. See Amend. Compl. Ex. 10. Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under a Policy ¶¶ 4(b)(iii) or (iv) analysis.
Finally, Complainant asserts Respondent engaged in typosquatting when it registered the <clips4salke.com> domain name. Registering a disputed domain name by misspelling a complainant’s mark supports findings of bad faith under Policy ¶ 4(a)(iii). See Priceline.com, Inc. v. Ryan G Foo / PPA Media Services, FA 135598 (Forum Aug. 18, 2016) (holding that registration of a domain name consisting of a slight misspelling of the complainant’s mark and affiliation of that domain name with the complainant’s affiliate program constituted bad faith per Policy ¶ 4(a)(iii)). Complainant argues that Respondent merely adds the letter “k” to Complainant’s CLIPS4SALKE.COM mark. As such, the Panel finds that Respondent engages in typosquatting, thus supporting bad faith under a Policy ¶ 4(a)(iii) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the disputed domain name containing Complainant’s protected mark in its entirety in bad faith; Complainant satisfied the elements of ICANN 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 <clips4salke.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 16, 2018.
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