Callisto Media Inc. v. Benjamin Collier
Claim Number: FA2304002042242
Complainant is Callisto Media Inc. (“Complainant”), represented by Marc Kaufman, California, USA. Respondent is Benjamin Collier (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <callistopublishing.com>, registered with NameCheap, 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on April 28, 2023; Forum received payment on April 28, 2023.
On April 28, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <callistopublishing.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2023 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@callistopublishing.com. Also on May 1, 2023, 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 May 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
A. Complainant
Complainant made the following contentions.
Complainant, Callisto Media, Inc., sells books and provides services for publishing books in the areas of children’s education, self-help, health, and cooking. Complainant asserts common law rights in the CALLISTO mark based upon continuous and widespread use, as well as widespread recognition. Respondent’s <callistopublishing.com> domain name is confusingly similar to Complainant’s CALLISTO mark as it reproduces the mark in its entirety, merely adding the descriptive word “publishing” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <callistopublishing.com> domain name. Respondent is not licensed or authorized to use Complainant’s CALLISTO mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer competing services as Complainant’s business.
Respondent registered and uses the <callistopublishing.com> domain name in bad faith. Respondent uses the disputed domain name to offer competing services as Complainant’s business for commercial gain.
1. Complainant is a United States company engaged in selling books and providing related goods and services.
2. Complainant has established its common law trademark rights in the CALLISTO mark and that those rights accrued from at least May 26, 2011.
3. Respondent registered the <callistopublishing.com> domain name on November 3, 2022.
4. Respondent has caused the disputed domain name to be used to offer competing services as Complainant’s business.
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 submits that it has common law rights in the CALLISTO mark based upon continuous and widespread use of the mark, as well as widespread recognition. Registration of a mark with a trademark agency is not required by Policy ¶ 4(a)(i) if complainant has established common law rights in the mark prior to a respondent’s registration of the disputed domain name. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
A showing of longstanding use, evidence of holding an identical domain name, significant good will, and media recognition is evidence of the mark acquiring sufficient secondary meaning required to demonstrate common law rights in the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant has used its CALLISTO mark in commerce since as early as May 26, 2011, Complainant offers evidence of the public recognition of its mark that the Panel accepts, Complainant offers proof that it has expended $60,000 over the last three years promoting its goods and services under the trademarks, and Complainant provides evidence of its gross sales from 2020-2022. See Compl. Ex. 1-5. Thus, the Panel finds that Complainant has established common law rights in the CALLISTO mark under Policy ¶ 4(a)(i) and that those rights accrued at least from May 26, 2011.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CALLISTO mark. Complainant contends that Respondent’s <callistopublishing.com> domain name is confusingly similar to Complainant’s CALLISTO mark as it incorporates the mark in the domain name in its entirety, merely adding the descriptive word “publishing” to form the disputed domain name. The addition of a descriptive term is insufficient to differentiate a complainant’s mark with a disputed domain name under Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the CALLISTO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it 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 name 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)).
(a) Respondent has chosen to take Complainant’s CALLISTO mark and to use it in its domain name;
(b) Respondent registered the <callistopublishing.com> domain name on November 3, 2022;
(c) Respondent has used the disputed domain name to offer competing services to those of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant claims that Respondent does not have rights or legitimate interests in the <callistopublishing.com> domain name as Respondent is not licensed or authorized to use Complainant’s CALLISTO mark and is not commonly known by the disputed domain name. 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 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 to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Benjamin Collier”. See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Additionally, Complainant submits that Respondent does not use the <callistopublishing.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead Respondent uses the disputed domain name to offer competing services as Complainant’s business. The use of a disputed domain name to offer products and/or services that compete directly with a complainant’s business is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the disputed domain name’s resolving website offering competing services to those offered by Complainant. See Complaint ¶ 7[a]. As such, as the Panel agrees, it finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Respondent registered and uses the <callistopublishing.com> domain name in bad faith as Respondent uses the disputed domain name to offer competing services as Complainant’s business for commercial gain. The use of a disputed domain name to display products and/or services similar to a complainant’s imputed an intent to attract internet users for commercial gain per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As support, Complainant provides screenshots of the disputed domain name’s resolving website offering competing services to those offered by Complainant. See Complaint ¶ 7[a]. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CALLISTO mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <callistopublishing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 26, 2023
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