Wiluna Holdings, LLC v. DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD
Claim Number: FA1809001804994
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4ale.com>, registered with Uniregistrar 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 7, 2018; the Forum received payment on September 7, 2018.
On September 11, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <clips4ale.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar 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 September 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@clips4ale.com. Also on September 12, 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 September 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 engages in the business of offering adult-oriented materials under the CLIPS4SALE.COM mark, and has offered these services since at least as early as July 2003. Complainant has rights in the CLIPS4SALE.COM mark through 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 Compl. Ex. 1. Complainant also has common law rights in the mark through extensive and exclusive use in commerce. Consumers and the trade have come to recognize Complainant as the source of adult-entertainment media offered via its CLIPS4SALE.COM website. Complainant has a first use date of July 1, 2002. See Compl. Ex. 1. Respondent’s <clips4ale.com> domain name is identical or confusingly similar to Complainant’s mark as it eliminates the letter “S” from Complainant’s mark.
Respondent has no rights or legitimate interests in the <clips4ale.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent redirects users to provide links to various third party websites that offer and sell content. See Compl. Ex. 10.
Respondent registered and uses the <clips4ale.com> domain name in bad faith. Respondent’s use of the domain name disrupts Complainant’s business and merely capitalizes off the goodwill associated with the mark by offering links to third-party goods and services. See Compl. Ex. 10. Further, Respondent’s domain name is merely a typosquatted version of Complainant’s CLIPS4SALE.COM mark, as it merely eliminates one letter.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <clips4ale.com> domain name on August 12, 2005.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <clips4ale.com>, is confusingly similar to Complainant’s valid and subsisting trademark, CLIPS4SALE. Other than waiting 13 years to bring this complaint, Complainant has adequately plead both its common law rights in and to this trademark as well as its registered rights therein. Respondent arrives at the disputed domain name by taking Complainant’s mark in total, merely deleting and “s” and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent redirects users to provide links to various third party websites that offer and sell content. See Compl. Ex. 10.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged bad faith use and registration of the disputed domain name. Complainant claims that Respondent is disrupting Complainant’s business and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering links to competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the resolving webpage associated with the domain name, which contains links to services such as “Movies 4 Free” and “Donate for Charity.” See Compl. Ex. 10. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Moreover, Complainant contends that by eliminating the letter “S” from Complainant’s mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent’s deletion of one letter in Complainant’s mark constitutes typosquatting and, as such, the Panel finds bad faith use and registration under Policy ¶ 4(a)(iii).
Finally, given the similarity of the disputed domain name with Complainant’s trademark and the distinctive nature of that mark, the Panel finds that this and the totality of the circumstances indicate that Respondent had actual knowledge of Complainant’s trademark and its rights thereto.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <clips4ale.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: October 4, 2018
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