Licensing IP International S.à.r.l. v. Nanci Nette / Name Management Group
Claim Number: FA1906001846772
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by Marcel Naud of ROBIC, LLP, Canada. Respondent is Nanci Nette / Name Management Group (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tranangels.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 June 7, 2019; the Forum received payment on June 7, 2019.
On June 12, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tranangels.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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@tranangels.com. Also on June 18, 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 July 10, 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
Complainant offers internet based adult entertainment services. Complainant has rights in the trademark TRANSANGELS through its registrations with the United Kingdom Intellectual Property Office (“UKIPO”) dated Sept. 29, 2017, the European Union Intellectual Property Office (“EUIPO”) dated Sept. 29, 2017 and the United States Patent and Trademark Office (“USPTO”) dated Oct. 23, 2018. Respondent’s <tranangels.com> domain name is confusingly similar to Complainant’s TRANSANGELS mark as Respondent merely removes the letter “s” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <tranangels.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as the disputed domain name resolves to a webpage offering pay-per-click hyperlinks to other businesses that compete with Complainant.
Respondent registered and uses the <tranangels.com> domain name in bad faith, as the Respondent is attempting to disrupt Complainant’s business. Additionally, Respondent is attempting to attract internet users for commercial gain using the disputed domain name which is confusingly similar to Complainant’s mark. Furthermore, Respondent’s status as a professional domainer, its choice of domain name and knowledge of domain name security, all lead to an inference that Respondent intended to sell the disputed domain name at some time in the future.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 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 has rights in its TRANSANGELS mark through its registrations with the UKIPO, the EUIPO, and the USPTO. Registration with a national trademark office is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country.”); see also Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan. 5, 2017) (“Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”). Therefore, the Panel finds that the Complainant has rights in the TRANSANGELS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tranangels.com> domain name is confusingly similar to Complainant’s TRANSANGELS mark as Respondent merely removes the letter “s” and adds the “.com” gTLD. Removal of one or two letters from a complainant’s mark, along with the addition of a gTLD, is not sufficient to distinguish a disputed domain name form complainant’s mark under Policy ¶ 4(a)(i). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). Therefore, the Panel finds that Respondent’s <tranangels.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 that 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 argues that Respondent has no rights or legitimate interest in the <tranangels.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. In the absence of a response, relevant evidence such as the information contained in WHOIS records can be used as evidence to assist the determination of whether a respondent is or is not commonly known by the disputed domain name 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 to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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)”). Here, Complainant provides the WHOIS information for the <tranangels.com> domain name, with verification from the concerned registrar showing “Nanci Nette” as the registrant and there is no evidence in the record to suggest that Respondent is known otherwise or that it was authorized to use the mark. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <tranangels.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent has no rights or legitimate interests in the <tranangels.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to a webpage offering pay-per-click hyperlinks. Using a disputed domain name to offer sponsored links for various goods and services is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides various screenshots of the resolving webpage for the <tranangels.com> domain name, showing that it displays monetized pay-per-click links to various third parties.
Other screenshots show that the domain name does not resolve to any website at all but rather to a “HTTP 302 error” notice. Such passive holding has also been found to not support any rights or legitimate interests in a disputed domain name. See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).
On a balance of the evidence presented in this case, the Panel concludes that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <tranangels.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Where a disputed domain name was created prior to the earliest date on which a complainant can claim trademark rights, a common question is whether the Respondent could have registered the domain name in bad faith under such circumstances. However, it has become well accepted that the acquisition of a domain name by an unrelated party subsequent to the domain’s creation creates a new “registration” for purposes of the Policy. See DIRECTV, Inc. v. Toshi Amori, Claim No. FA1106001394254 (Forum July 28, 2011) (“The operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner).”).
The Panel notes that the <tranangels.com> domain name was first created on June 7, 2017, a date that is prior to the earliest date on which Complainant claims trademark rights. Complainant argues the Panel should not consider the domain’s creation date as the date on which Respondent acquired and became registrant of the disputed domain name. Instead, it asserts that Respondent “acquired the Domain Name between June 23, 2018, and July 18, 2018”. Further, Complainant states that one of its former employees initially created, without authority, the disputed domain name, and that the noted date range covers the time at which such former employee transferred the disputed domain name to Respondent. Complainant does not provide any supporting evidence for this assertion. However, it does provide a series of printouts reflecting archived WHOIS records ranging from the present back to the date on which the disputed domain name was created. This evidence reflects the fact that both the server information and the registrar for the disputed domain name changed during the date range asserted by Complainant. Significantly, the new server and registrar reflect the same information as used by Respondent for the other domain names in its sizeable portfolio. It is accepted amongst UDRP Panels to consider the date on which the Respondent acquired the disputed domain rather than only the creation date thereof. As there is no Response or other submission from the Respondent to counter Complainant’s evidence that the Respondent acquired the disputed domain name some time between June 23, 2018, and July 18, 2018, the Panel accepts this allegation as reasonable and concludes that the Respondent acquired the disputed domain name on a date after Complainant developed rights in its claimed mark.
Complainant argues that Respondent registered and uses the <tranangels.com> domain name in bad faith, as Respondent is attempting to disrupt Complainant’s business by offering pay-per-click hyperlinks, some of which compete with Complainant. Using a disputed domain name to offer sponsored links for various goods and services that compete with complainant is evidence of bad faith under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). Complainant provides various screenshots of the resolving webpage for the <tranangels.com> domain name, showing pay-per-click links. Therefore, the Panel finds that Respondent registered and uses the <tranangels.com> domain name in bad faith, as it is attempting to disrupt Complainant’s business under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent registered and uses the <tranangels.com> domain name in bad faith, as Respondent is attempting to attract internet users for commercial gain. As noted above, Respondent is offering pay-per-click hyperlinks at the disputed domain’s website. Registration and use of a disputed domain name to offer competing or unrelated hyperlinks is evidence of bad faith. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant points to screenshots of the resolving webpage for the <tranangels.com> domain name showing that monetized links are indeed being displayed. Thus, the Panel finds that Respondent registered and uses the <tranangels.com> domain name in bad faith, as Respondent is attempting to attract internet users for commercial gain under Policy ¶ 4(b)(iv).
Finally, it is claimed that the Respondent has engaged in a pattern of conduct in which it registers domain names that copy the trademarks of others. The registration of multiple confusingly similar domain names incorporating various marks, along with evidence of prior adverse UDRP decisions against a respondent, can demonstrate bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)); see also Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, Complainant submits evidence that Respondent registered other domain names that incorporate various marks owned by other companies. Further, Respondent has previously been involved as a respondent in at least ten prior UDRP proceedings which resulted in the concerned domain names being transferred to complainants (n.b. complaints were denied in two additional cases against the Respondent). See, e.g., Sanofi v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, D2018-2654 (WIPO February 7, 2019) (“the Respondent has a pattern of registering domain names patently based on well-known trademarks, in the classic model of cybersquatting.”). The Panel agrees with Complainant that Respondent’s ownership of other disputed domains and the prior adverse UDPR decisions against it further evinces bad faith registration under Policy ¶ 4(b)(ii) in that it has engaged in a pattern of conduct to prevent the Complainant from reflecting its mark in a corresponding domain name in the “.com” TLD.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tranangels.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 11, 2019
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