TM Web Properties, Ltd. v. dlp / donald seoane
Claim Number: FA1909001861963
Complainant is TM Web Properties, Ltd. (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA. Respondent is dlp / donald seoane (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webzillahosting.com>, registered with Name.com, Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on September 12, 2019; the Forum received payment on September 12, 2019.
On September 16, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <webzillahosting.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 7, 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 firstname.lastname@example.org. Also on September 17, 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 October 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant uses the WEBZILLA mark in connection with hosting services. It has rights in the WEBZILLA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,563,190, registered Jan. 20, 2009, New Certificate Aug. 2, 2016). Respondent’s <webzillahosting.com> Domain Name is confusingly similar to Complainant’s WEBZILLA mark as it incorporates the mark, adding the generic/descriptive term “hosting” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not licensed or permitted to use the WEBZILLA mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to defame and tarnish Complainant, its affiliates, the former CEO of its holding company, and the WEBZILLA mark.
Respondent registered and uses the Domain Name in bad faith. He attempts to disrupt Complainant’s business by defaming Complainant, the former CEO of its holding company, and the WEBZILLA mark. Also, Respondent had actual knowledge of Complainant’s rights in the WEBZILLA mark prior to registering the Domain Name.
Respondent did not submit a Response in this proceeding but he did email the Forum on September 17, 2019, stating that the registration of the disputed domain name does not infringe on the WEBZILLA mark, as it exposes “criminal thieves” and constitutes fair use.
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 cancelling or transferring the Domain Name:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The WEBZILLA mark was registered to Complainant with the USPTO (Reg. No. 3,563,190) on January 20, 2009 (New Certificate August 2, 2016) (Amended Complaint Annex 2). A complainant’s registration of a mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <webzillahosting.com> domain name is confusingly similar to the WEBZILLA mark, as it incorporates the mark verbatim, merely adding the generic/descriptive term “hosting” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). In fact, the added generic term “hosting” actually exacerbates the confusion because it suggests the services offered by Complainant. Capital One Financial Corp. v. Domain Admin / Whois Privacy Corp., FA 1582803 (Forum Nov. 13, 2014) (finding that “the descriptive phrase ‘auto loan’ as included in [the <capitaloneautoloan.org>] domain name enhances the confusing similarity of the domain name.”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the WEBZILLA mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not licensed or otherwise permitted Respondent to use its mark, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the Domain Name is so closely identical to Complainant’s mark as to cause an Internet user to believe that the web site resolving from it is sponsored or endorsed by Complainant, and the web site resolving from it contains unrelated false and defamatory statements about Complainant and a former CEO of Complainant’s holding company. These allegations are addressed as follows:
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), 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.”).
The WHOIS information furnished to the Forum by the registrar lists the registrant of the Domain Name as “dlp / Donald Seoane.” Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complaint Annex 7 is a screenshot of the web page resolving from the Domain Name. It contains a number of options for the visitor to click. One of them bears the message “Webzilla.com Webzilla Hosting is a fraud company that scams people and will rip you off. If you host with them they will extort money from you and threaten to release your private info and leak your passwords and databases.” It further states that the “owner Aleksej Gubarev is a russian hacker thats [sic] also wanted for child rape in many Asian countries.” Another reads “the owner of webzilla and XBT Holdings is none other than Russian hacker Aleksej Gubarev and he is also a gay child rapist scammer wanted in Cambodia and Thailand for raping young boys.” Yet another provides a “List of ways to hurt and cause Webzilla XBT Holdings and Aleksej Gubarev much headache and money, and I will be adding more as time goes on. These are things I will also be doing to him and his company.” It then lists 6 tactics of opening up blogs and other measures designed generally to harass and annoy Complainant and disrupt its business.
By using Complainant’s mark verbatim and adding the related term “hosting,” which describes what Complainant does, the Domain Name clearly and falsely implies that the web site resolving from it would be sponsored or operated by Complainant. Complainant argues that this, in and of itself, should deny Respondent the right to claim fair use for the purposes of Policy ¶ 4(c)(iii). The WIPO Overview 3.0, ¶ 2.5, would seem to support that view, stating “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” The rationale behind this approach is that the focus of the UDRP is cybersquatting, not free speech—ordering the transfer of an infringing domain name does not deny the registrant its right of free speech, it only denies it the ability to do so by means of a domain name that wrongfully uses the trademark of another. Many UDRP panels, on the other hand, have espoused the view that the free exchange of ideas on the Internet is so important that it should not be limited solely because a domain name might inaccurately suggest an affiliation. Brittannia Building Society v. Britannia Fraud Prevention, Case No. D2001-0505 (WIPO July 6, 2001) (“. . . such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the Internet.). As this issue has been addressed over the years by many panels, some have concluded that neither of these two approaches should be applied exclusively but that panels should consider all of the circumstances present to determine whether the domain name in a given case is so confusingly similar or identical to the complainant’s mark as to justify denying the respondent the safe harbor afforded by Policy ¶ 4(c)(iii). Midland Heart Limited v. Uton Black, Case No. D2009-0076 (WIPO March 30, 2009) (“There has been a diversity of decisions under the UDRP as to the application of its second requirement in relation to the use of a domain name identical to a complainant's mark for a website providing genuine criticism of the Complainant. This Panel adheres to the view expressed in Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947, and other cases, that such use is neither inherently incompatible with the UDRP, nor always permitted by the UDRP, and that its compatibility with the UDRP depends on the circumstances.”).
The Panel here declines to resolve this case based upon the relationship between the Domain Name and Complainant’s mark, but focuses instead upon the actual use being made of the Domain Name. That the resolving web site is critical of Complainant cannot be debated. Nor can it be debated that any impression of Complainant sponsorship given by the Domain Name is immediately and unequivocally dispelled upon visiting the site itself. The real question is whether the site offers fair comment on the one hand or whether it is intended to tarnish Complainant’s mark within the meaning of Policy ¶ 4(c)(iii). Tarnishing in this context refers to linking unrelated pornographic, violent or other inherently evil behavior to the mark at issue. Britannia Building Society v. Britannia Fraud Prevention, Case No. D2001-0505 (WIPO July 6, 2001), Nicole Kidman v. John Zuccarini d/b/a/ Cupcake Party, Case No D-2000-1415 (WIPO January 23, 2000) (“Likewise, the sexual implications of the domain name <nicolekidmannude.com> and the sexually explicit advertisements to which it was connected threaten to tarnish Kidman’s mark.”). Criticism, even if defamatory, does not constitute tarnishing and is not prohibited by the Policy. Britannia Building Society v. Britannia Fraud Prevention, Ibid., Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. 2000-0662 (WIPO September 19, 2000) (protection for genuine criticism sites is provided by the Policy’s legitimate interest and bad faith prongs).
Commentary on Respondent’s web site to the effect that Complainant engages in predatory business practices is related to the business of Complainant but the references to hacking, raping children, scamming and evading justice in foreign countries are not. They plainly link vile criminal acts to Complainant and its mark. They also are made in an intemperate and provocative manner, using terms such as “child rapist scammer” and provide no evidence or explanation in support. This type of expression cannot rationally be regarded as honest, genuine criticism entitled to protection as fair use under the Policy. Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina, FA160200 1660728 (Forum Mar. 22, 2016) (“In the Panel’s view the present case is not one of criticism but one where the site is clearly intended for denigration and disparagement, and probably as Complainant submits, revenge, by means of using extreme language, up to and including an allegation of murder. . . . The only conclusion the Panel can draw from an examination of this material, none of which is covered by a qualification, is that it is not legitimate criticism, but abuse and that it was devised to damage Complainant and its business and personal interests.”). The Panel finds that Respondent’s intent in posting the personal references to the former CEO of Complainant’s holding company and linking that alleged misconduct to Complainant was to tarnish the Complainant and its mark. Respondent is not making a legitimate noncommercial or fair use of the Domain Name within the meaning of Policy ¶ 4(c)(iii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. While that conduct may not fall within any of the grounds articulated in Policy ¶ 4(b), that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using the confusingly similar Domain Name to criticize and defame Complainant and the former CEO of its holding company, tarnishing Complainant and its WEBZILLA mark, clearly disrupts Complainant’s business and demonstrates bad faith. Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith), Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina, FA160200 1660728 (Forum Mar. 22, 2016) (“It is true that gripe sites may give rise to a legitimate use and negate the notion of bad faith, but as has already been pointed out there must be doubt whether the sites in question in this case are gripe or criticism sites at all, as the content goes far beyond what is normally regarded as criticism and is more akin to abuse and with the obvious intention to damage Complainant’s business and trademarks. As was noted in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No: D2002-0823:
‘Freedom of speech must be balanced with some degree of control, manner and regulation to avoid the arising of abuses; limits must be set.’ In the present case, it is very apparent that Respondent has not exhibited any such balance and that there were no limits to which Respondent would not go to denigrate Complainant and do damage to it under the guise of using domain names that incorporate Complainant’s trademarks and give the false impression that they are domain names of Complainant.”).
Additionally, although Complainant did not assert the argument, Respondent registered and is using the Domain Name, which incorporates the WEBZILLA mark verbatim, adding a generic term which actually exacerbates the confusion, without himself having any connection with that mark or its owner, the Complainant. Considering the non-exclusive nature of Policy ¶ 4(b), the registration and use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”).
Finally, it is evident from the long-standing notoriety of Complainant’s WEBZILLA mark, from Respondent’s copying that mark verbatim into the Domain Name, and from the vitriolic content directed at and about Complainant on Respondent’s web site, that Respondent had actual knowledge of Complainant and its mark when he registered the Domain Name in August 2019 (WHOIS report submitted as Complaint Exhibit 1 shows registration date). Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webzillahosting.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
October 14, 2019
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