Allison Chermak Strull also known professionally as Allison Strull v. daniel sallus
Claim Number: FA2009001911689
Complainant is Allison Chermak Strull also known professionally as Allison Strull (“Complainant”), California, USA. Respondent is daniel sallus (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allisonstrull.com> and <allisonchermakstrull.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2020; the Forum received payment on September 9, 2020.
On September 10, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allisonstrull.com> and <allisonchermakstrull.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 September 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2020 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@allisonstrull.com, postmaster@allisonchermakstrull.com. Also on September 17, 2020, 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 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant uses her personal name in connection with her private law practice. Complainant has common law rights in the ALLISON STRULL and ALLISON CHERMAK STRULL marks due to her long standing use of the marks in commerce associated with Complainant’s business. Respondent’s <allisonstrull.com> and <allisonchermakstrull.com> domain names are confusingly similar to Complainant’s ALLISON STRULL and ALLISON CHERMAK STRULL marks. Respondent incorporates the marks in their entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <allisonstrull.com> and <allisonchermakstrull.com> domain names as Respondent is not commonly known by the disputed domain names, nor did Complainant authorize Respondent to use the marks in any way. Additionally, Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to denigrate Complainant in order to create a bad impression of Complainant.
Respondent registered and used the <allisonstrull.com> and <allisonchermakstrull.com> domain names in bad faith as Respondent registered the disputed domain names in order to prevent Complainant from registering the domain names. Respondent attempts to disrupt Complainant’s business by redirecting to articles purporting to be about Complainant’s professional history. Further, Respondent had actual knowledge of Complainant’s rights in the ALLISON STRULL and ALLISON CHERMAK STRULL marks as Complainant was a former employee of Respondent’s law firm.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States resident who uses her personal name in connection with her private law practice.
2. Complainant has established common law trademark rights in the ALLISON STRULL and ALLISON CHERMAK STRULL marks at least from 2013.
3. Respondent registered the <allisonstrull.com> and <allisonchermakstrull.com> domain names on June 13, 2019.
4. Respondent uses the disputed domain names to denigrate Complainant in order to create a bad impression of Complainant.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that she has common law rights in the ALLISON STRULL and ALLISON CHERMAK STRULL marks. Under Policy ¶ 4(a)(i), common law rights in a mark may be sufficient when a complainant has not registered the mark with a trademark agency. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). A complainant may show common law rights in a mark through the continuous use of the mark in commerce or related to a complainant’s business. See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). Here, Complainant has provided her business card and other documents that show the use of ALLISON STRULL and ALLISON CHERMAK STRULL marks in connection with her offering of legal services. See Amend. Compl. Annexes. 4-7. Therefore, the Panel agrees and finds that Complainant has established common law rights in the ALLISON STRULL and ALLISON CHERMAK STRULL marks per Policy ¶ 4(a)(i) at least since 2013.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ALLISON STRULL and ALLISON CHERMAK STRULL marks. Complainant argues that Respondent’s <allisonstrull.com> and <allisonchermakstrull.com> domain names are identical to Complainant’s ALLISON STRULL and ALLISON CHERMAK STRULL marks. Registration of a domain name that contains a mark in its entirety and adds a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Here, Complainant argues that Respondent incorporates the marks in their entirety and adds the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain names are identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that she must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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”).
(a) Respondent has chosen to take Complainant’s ALLISON STRULL and ALLISON CHERMAK STRULL trademarks and to use them in their entirety in its domain names;
(b) Respondent registered the <allisonstrull.com> and <allisonchermakstrull.com> domain names on June 13, 2019;
(c) Respondent uses the disputed domain names to denigrate Complainant in order to create a bad impression of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <allisonstrull.com> and <allisonchermakstrull.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the ALLISON STRULL and ALLISON CHERMAK STRULL marks or register domain names using Complainant’s marks. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the 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)”). The WHOIS information for the disputed domain names lists the registrant as “Daniel Sallus” and there is no other evidence to suggest that Respondent was authorized to use the ALLISON STRULL and ALLISON CHERMAK STRULL marks or was commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to denigrate Complainant in order to create a bad impression of Complainant. Use of a disputed domain name to create a bad impression of a complainant in order to disrupt and harm its business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest), see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant has provided the Panel with screenshots of Respondent’s webpages, showing pages that seek to create a bad impression of Complainant and the services she provides. See Amend. Compl. Annexes 2 and 3. Therefore, as the Panel agrees, it finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. 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 names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <allisonstrull.com> and <allisonchermakstrull.com> domain names in bad faith as Respondent registered the disputed domain names in order to prevent Complainant from registering the domain names and disrupt Complainant’s business by redirecting to articles about Complainant and prior lawsuits in which she was involved. Use of a disputed domain name to prevent a complainant from registering the domain name and disrupting its business may be evidence of bad faith per Policy ¶ 4(b)(iii). 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 The Finest Golf Clubs of the World, LTD d/b/a The Eden Club v. Neil Krauter, FA 1537779 (Forum Feb. 14, 2014) (finding bad faith per Policy ¶ 4(b)(iii) where the respondent was diverting users to a website hosting negative commentary because “Respondent uses the <theedenclubfraud.com> domain name to interfere with Complainant’s business.”). Here, Complainant has provided screenshots of Respondent’s domain names resolving webpages that show commentary associated with Complainant that could create a negative impression of Complainant and her business. See Amend. Compl. Annexes. 2 and 3. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ALLISON STRULL and ALLISON CHERMAK STRULL marks before registering the domain names as Complainant was a former employee of Respondent’s law firm. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name that makes use of a mark in order to disrupt a complainant’s business may be evidence of bad faith per Policy ¶4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Here, Complainant argues that Respondent knew of Complainant’s rights in the ALLISON STRULL and ALLISON CHERMAK STRULL marks as Complainant is a former employee of Respondent’s firm. See Amend. Compl. Annex 8. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark which constitutes bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allisonstrull.com> and <allisonchermakstrull.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 14, 2020
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