Outskirts Press, Inc. v. Domain Admin / TotalDomain Privacy Ltd
Claim Number: FA2210002017321
Complainant is Outskirts Press, Inc. (“Complainant”), represented by Brent Sampson, US. Respondent is Domain Admin / TotalDomain Privacy Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outskirtpress.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on October 25, 2022; Forum received payment on October 25, 2022.
On October 26, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <outskirtpress.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com; that Respondent is the current registrant of the name; and that the domain name had been placed on Registrar LOCK.
PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 October 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 2022 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 October 28, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Outskirts Press, Inc., is an online self-publishing company conducting business with customers around the world from the website located at “www.outskirtspress.com”. Complainant has rights in the OUTSKIRTS PRESS mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <outskirtpress.com> domain name is virtually identical and confusingly similar to Complainant’s mark. Complainant’s <outskirtspress.com> domain name was registered on September 8, 2002.
Respondent has no legitimate interests in the <outskirtpress.com> domain name. Respondent has registered the domain name with the clear purpose of causing confusion amongst Complainant’s clients and potential clients with a confusingly similar domain name that is specifically meant to capitalize off typographical errors when the end-user accidentally omits the “s” when attempting to go to the legitimate <outskirtspress.com> website or research that website. Depending upon the browser being used by the end-user, the domain name will typically take the end-user to a “pay-per-click link farm” which rewards the Respondent in a monetary way for these typographical errors.
Respondent registered and uses the <outskirtpress.com> domain name in bad faith for the following reasons:
(i) the domain name was initially registered on October 12, 2005 by TotalDomain Privacy, Ltd., approximately three years after Complainant’s legitimate domain name was registered (and at the approximate time when Complainant began its growth and international success, including in Panama);
(ii) the domain name was registered ten months after the trademark OUTSKIRTS PRESS was filed by Complainant as a registered trademark under registration number 3116215; and
(iii) according to the “Registry WHOIS Record” the domain name was recently “updated” on August 29, 2022, which is the exact date this dispute was brought to the Respondent’s attention via their website at “www.publicdomainregistry.com” by Complainant.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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 shown that it has rights in the OUTSKIRTS PRESS mark through registration of the mark with the USPTO (Reg. No. 3,116,215 filed December 14, 2004, registered July 18, 2006, claiming first use in commerce October 1, 2002). The Panel finds Respondent’s <outskirtpress.com> domain name to be virtually identical and confusingly similar to Complainant’s mark because, apart from the absence of the letter “s” and the space between the words, it comprises the OUTSKIRTS PRESS mark in its entirety, with the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Under the Policy it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on Respondent.
The <outskirtpress.com> domain name was registered on October 12, 2005 some eleven months after Complainant filed its trademark application and some nine months before the mark was registered. Upon registration on July 18, 2006, Complainant’s rights in its OUTSKIRTS PRESS mark took effect from the filing date, December 14, 2004.
This timing raises the possibility that Respondent was aware of Complainant’s application to register its mark when Respondent registered the domain name. However, Complainant has provided no evidence that, through use of its <outskirtspress.com> website or otherwise, Complainant had established unregistered or common law trademark rights by showing that its OUTSKIRTS PRESS mark had become a distinctive identifier which consumers associated with Complainant’s goods and/or services prior to the registration of Respondent’s domain name.
No evidence has been provided as to Complainant’s growth and international success, in Panama or elsewhere. Nor has Complainant provided any evidence as to the alleged use of the <outskirtpress.com> domain name by Respondent. Complainant has not asserted that the “pay-per-click link farm” to which it says the domain name resolved displayed any links related to any goods or services associated with Complainant. Further, the words “outskirt” and “press” are dictionary words which, even in combination, are not necessarily one-of-a-kind.
Complainant has failed to establish this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
Having regard to all the circumstances set out above in relation to the second element, the Panel is not persuaded that Respondent registered the domain name with Complainant or its trademark in mind, nor that Respondent has used the domain name to target Complainant or to take advantage of Complainant’s reputation. In the absence of any evidence as to the use to which the domain name has been put, the confusing similarity between the domain name and Complainant’s mark has not been shown to be typosquatting. See Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600 (August 16, 2019).
The recent Registry WHOIS Record update which Complainant describes as indicative of Respondent’s bad faith has not been identified by Complainant. The timing is consistent with the domain name being placed on Registrar LOCK, preventing the domain name from being transferred pending the outcome of this Complaint.
Complainant has failed to establish this element.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <outskirtpress.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: November 28, 2022.
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