Clinton Sparks and Get Familiar Inc. v. Vyacheslav Kaplunenko
Claim Number: FA1905001843527
Complainant is Clinton Sparks and Get Familiar Inc. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is Vyacheslav Kaplunenko (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clintonsparks.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2019; the Forum received payment on May 16, 2019.
On May 17, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <clintonsparks.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 May 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2019 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@clintonsparks.com. Also on May 20, 2019, 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 June 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainants are Clinton Sparks, an America DJ, and his company, Get Familiar Inc., which publishes and produces music owned by Mr. Sparks. Complainant has common law rights in the CLINTON SPARKS mark through its extensive and continuous use since 1999 as well as the fame of mark. The <clintonsparks.com> domain name was originally owned by Get Familiar Inc. since 2002 but which lapsed in July of 2017 due to a dispute with its agent who was responsible for managing the domain name. The domain was then registered by Respondent in 2017 and it is identical or confusingly similar to the CLINTON SPARKS mark.
Respondent has no rights or legitimate interests in the <clintonsparks.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to display a fake personal contact page for a fictitious “Clinton Sparks,” allegedly a department chair at the University of Pennsylvania. However, there is no evidence that this particular Clinton Sparks exists and the website is used in furtherance of Respondent’s fraudulent attempt at leveraging the fame of Complainant’s mark.
Respondent registered and uses the <clintonsparks.com> domain name in bad faith, as Respondent is attempting to attract internet users for commercial gain by hosting a hyperlink to a third-party page that offers essay writing services for college students. Further, Respondent had actual knowledge of Complainant’s mark and it attempts to use Complainant’s mark to promote the relevance and search engine placement of the websites promoted through the <clintonsparks.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
PRELIMINARY ISSUE: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Clinton Sparks, an individual, and Get Familiar Inc., a corporate entity. According to the Complaint, Get Familiar Inc. is a music publishing firm principally owned by Mr. Sparks and is also the principal licensee of the mark "CLINTON SPARKS" for music production and publishing services. Further, this corporation was the owner of the disputed domain name prior to it being owned by the Respondent.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant does not currently hold a trademark registration in the CLINTON SPARKS mark although it claims that it holds common law rights thereto. Policy ¶ 4(a)(i) does not require a complainant to own a trademark registration if it can demonstrate established rights in the mark through other means such as use in commerce which leads to rights at common law. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”) To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning beyond any descriptive meaning it may have. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”) Here, Complainant provides screenshots of a Wikipedia page showing use of the CLINTON SPARKS mark since 1999 as well as various promotional posters and album cover artwork that feature the Complainant’s CLINTON SPARKS mark. In light of this evidence, the Panel finds that the name CLINTON SPARKS has acquired secondary meaning and that Complainant does hold common law rights in the CLINTON SPARKS mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <clintonsparks.com> domain name is identical or confusingly similar to Complainant’s mark. Although not mentioned by the Complainant, the Panel notes that Respondent incorporated the mark in its entirety and merely adds the “.com” generic top-level domain (“gTLD”). The addition of a generic top-level domain may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”) Therefore, the Panel finds that Respondent’s <clintonsparks.com> domain name is identical or confusingly similar to Complainant’s CLINTON SPARKS mark.
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant next argues that Respondent has no rights or legitimate interests in the <clintonsparks.com> domain name as Respondent is not authorized or permitted to use Complainant’s mark and it is not commonly known by the name “Clinton Sparks”. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). 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)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”) Although the Complainant has not submitted into evidence the current WHOIS record for the disputed domain name, in its confirmation to the Forum the registrar has identified the Respondent as “Vyacheslav Kaplunenko”. In the absence of a Response or other submission by Respondent, no information in the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s mark. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <clintonsparks.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent’s use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name for a fake personal contact page for a non-existent “Clinton Sparks,” purporting to be a department chair at the University of Pennsylvania. Using a disputed domain name in connection with fraudulent or impersonation activities does not support the finding of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Here, Complainant provides screenshots of the resolving webpage for the <clintonsparks.com> domain name, showing a personal site for a “Clinton Sparks” of the University of Pennsylvania, providing contact information and a link to a third-party company called Write My Essay, which provides paid essay writing services to college students. Complainant further provides a screenshot of the University of Pennsylvania’s websites which indicate that no person named “Clinton Sparks” works there and that the phone number and physical address listed on the disputed domain website are, in fact, used by others at the University whose names are not Clinton Sparks. Therefore, the Panel finds that Respondent’s use is fraudulent and is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant provides evidence that it was, in fact, the previous registrant of the disputed domain name before the domain lapsed due to a dispute with its agent who was responsible for managing the name. Registration of a disputed domain name by a respondent after an inadvertent lapse in registration of that domain name by a complainant is not sufficient to establish rights or legitimate interests in the name. See Clark v. HiNet, Inc., FA 405057 (Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse); Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… 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.”) Here, Complainant provides screenshots of archived WHOIS records for the <clintonsparks.com> domain name, showing that the domain name was originally created on July 7, 2002 and was registered to the Complainant. Therefore, the Panel finds that this provides further support for the position that Respondent lacks rights or legitimate interest in the disputed domain name.
Complainant argues that Respondent had actual knowledge of Complainant’s CLINTON SPARKS mark. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established through evidence of the fame of the mark and the respondent’s use of it. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Here, Complainant submitted evidence supporting its contention that the mark is famous in the entertainment industry. It further contends that, rather than attempting to divert users away from Complainant, Respondent attempted to capitalize on the fame of the CLINTON SPARKS mark in order to attract users to its own site by enhancing its search engine rankings (i.e., its search engine optimization (“SEO”)). Complainant provides a screenshot of Respondent’s LinkedIn profile where he markets himself as an SEO expert. Accordingly, and in the absence of a response or other submission by the Respondent to refute this assertion, the Panel finds that Respondent did have actual knowledge of Complainant’s mark and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant further argues that Respondent’s bad faith is demonstrated by its attempt to intentionally attract, for commercial gain, Internet users by using the <clintonsparks.com> domain name to host a commercial third-party hyperlink. Using a disputed domain name to host hyperlinks that are unrelated to a complainant’s business may evince bad faith under Policy ¶ 4(b)(iv). See 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). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which features a link to an unrelated company called “Write My Essay”. Presumably, the Respondent earns affiliate revenue for sending users to this site. Complainant also provides a screenshot of the website to which the link leads and this does show promotion of paid academic essay writing services. Under these circumstances the Panel deems it more likely than not that Respondent registered and used the disputed domain name not for any good faith purpose related to the name “Clinton Sparks” but to target and profit from the value of Complainant’s mark. Having chosen to not participate in these proceedings, the Respondent presents no evidence to the contrary. Therefore, the Panel finds, by a preponderance of the evidence, that Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clintonsparks.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 14, 2019
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