Wiluna Holdings, LLC v. Milen Radumilo
Claim Number: FA1809001804995
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4sle.com>, registered with Lemon Shark Domains, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 7, 2018; the Forum received payment on September 7, 2018.
On September 7, 2018, Lemon Shark Domains, LLC confirmed by e-mail to the Forum that the <clips4sle.com> domain name is registered with Lemon Shark Domains, LLC and that Respondent is the current registrant of the name. Lemon Shark Domains, LLC has verified that Respondent is bound by the Lemon Shark Domains, 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 September 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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@clips4sle.com. Also on September 10, 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 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. 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). Respondent’s <clips4sle.com>[i] domain name is identical or confusingly similar to Complainant’s mark as it merely removes the letter “a”.
2. Respondent has no rights or legitimate interests in the <clips4sle.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the CLIPS4SALE.COM mark. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the resolving website to display links to third-party business to commercially benefit from pay-per-click fees.
3. Respondent registered and uses the <clips4sle.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the resolving website where it features links to unrelated, third-party websites.
4. Further, Respondent engages in typosquatting when it registered the <clips4sle.com> domain name as it removes the letter “a” in Complainant’s CLIPS4SALE.COM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CLIPS4SALE.COM mark. Respondent’s domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <clips4sle.com> domain name and that Respondent registered and uses the domain name 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.”).
Complainant has rights in the CLIPS4SALE.COM mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Complainant has provided a copy of its USPTO registration for the CLIPS4SALE.COM mark (e.g., Reg. No. 3,508,680, registered Sep. 30, 2008). Accordingly, the Panel may find that Complainant has established rights in the CLIPS4SALE.COM mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <clips4sle.com> domain name is identical or confusingly similar to Complainant’s CLIPS4SALE.COM mark as it merely removes the letter “a.” Misspelling of a complainant’s mark, either by adding or removing letters, may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). The Panel therefore finds that the <clips4sle.com> domain name is confusingly similar to the CLIPS4SALE.COM mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <clips4sle.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <clips4sle.com> domain name, as Respondent is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information for the <clips4sle.com> domain name lists the registrant as “Milen Radumilo,” and no information in the record indicates that Respondent is authorized or licensed to use the CLIPS4SALE.COM mark. The Panel therefore holds that Respondent has not been commonly known by the <clips4sle.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent uses the <clips4sle.com> domain name to offer links to generic services for Respondent’s own commercial gain. Using a domain name that is confusingly similar to a mark of another that resolves in a webpage offering generic hyperlinks generally fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage associated with the domain name, which contains links to businesses such as “Expedia Travel.” Thus, the Panel holds that Respondent uses the <clips4sle.com> domain name to display unrelated hyperlinks, which does not create rights and legitimate interests for the purposes of Policy ¶¶ 4(c)(i) and/or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <clips4sle.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain name to commercially benefit by offering links to unrelated, third-party websites. Using a domain name that contains the mark of another that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶¶ 4(b)(iii) or (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 Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). As noted above, Complainant provides a screenshot of the resolving webpage associated with the domain name, which contains links to businesses such as “Expedia Travel.” 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) and/or (iv).
Moreover, Complainant contends that by removing the letter “a” in Complainant’s mark, Respondent engages in typosquatting. A finding of typosquatting can show 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).”). The Panel agrees that Respondent’s removing of a letter in Complainant’s mark constitutes typosquatting, and therefore bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <clips4sle.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 11, 2018
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