ULIONA LIMITED v. steven RID
Claim Number: FA2305002045276
Complainant is ULIONA LIMITED (“Complainant”), represented by Nadezhda Minakova, Virginia, USA. Respondent is steven RID (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <save-from.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on May 19, 2023; Forum received payment on May 19, 2023.
On May 22, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <save-from.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 May 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@save-from.com. Also on May 23, 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 June 20, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 claims rights in the SAVEFROM mark established by its ownership of the United States trademark registration described below and its use of the mark in relation to the provision of its software solutions.
In particular, Complainant offers a software product that provides users Internet users with the ability to download YouTube videos for personal use by simply inserting the link (or URL) to a YouTube video within Complainant’s product.
Complainant asserts, that the disputed domain name <save-from.com> is clearly both identical and confusingly similar to the SAVEFROM, trademark in which it has rights.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Addressing the criteria mentioned in Policy ¶4(c)(i), Complainant submits that Respondent cannot show use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Complainant asserts that itself and its predecessors have owned and operated a website to which the disputed domain name resolves since March 12, 2008, (“Complainant’s Website”), a screen capture of which is exhibited in an annex to the Complaint. Furthermore, Complainant asserts that its registration of the SAVEFROM mark in the United States dates from April 5, 2016; therefore, it is contended that Respondent cannot show that it has acted with bona fide intent in registering the disputed domain name on July 7, 2022.
Additionally, Complainant argues that Respondent cannot show use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Addressing the criteria in Policy ¶4(c)(ii) Complainant alleges that Respondent cannot show that it has been commonly known by the disputed domain name.
Addressing the criteria in Policy ¶4(c)(iii) Complainant alleges that Respondent cannot show that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s SAVEFROM mark.
Referring to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, (“Respondent’s Website”), Complainant alleges that the screen capture shows that Respondent is using the disputed domain name to resolve to a competing website on which Respondent touts a product called a “SaveFrom Video Downloader” and an “Online Video Downloader” which is akin to the Product provided by the Complainant.
Complainant adds that while it does not know the exact structure and nature of the Respondent’s business, the Respondent’s use of the disputed domain name is in fact commercial, not fair use, and the disputed domain name is being used for commercial gain to mislead and divert consumers and/or tarnish the SAVEFROM mark at the expense of Complainant.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, and adds that Respondent clearly, or constructively, was aware, or ought to have been aware, of the identical and/or confusingly similar nature of the disputed domain name when it was registered.
Again referring to the exhibited screen capture of Respondent’s Website, Complainant adds that Respondent registered the disputed domain name intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s SAVEFROM mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location or of a product or service on its website or other online location.
Complainant argues that Respondent should be found to have registered the disputed domain name, primarily for the purpose of disrupting the business of a competitor, who is, in this case, is the Complainant.
Repeating that Complainant and its predecessors have been using and providing its product by means of its own domain name on Complainant’s Website since March 12, 2008, and have owned the SAVEFROM trademark registrations since April 5, 2016, whereas Respondent has owned and assumingly operated the disputed domain name only since July 7, 2022, Complainant argues that it is no coincidence that Respondent chose the disputed domain name which is identical and/or confusingly similar to that of the SAVEFROM mark.
Additionally, Complainant argues that there is no coincidence that the infringing products offered by Respondent using the disputed domain name are identical and/or confusingly similar to products offered by Complainant, i.e., video and multimedia downloads.
Complainant alleges that in such circumstances, it follows that Respondent is using the disputed domain name in bad faith to disrupt the business of Complainant, a competitor, and to confuse and mislead consumers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of software solutions for downloading media files from the Internet, and is the owner of the SAVEFROM, trademark which it uses in relation to the sale of its products. Complainant has registered the mark in the United States and is the owner of the following trademark registration:
· United States registered trademark SAVEFROM, registration number, 4,931,103, registered on the Principal Register on April 5, 2016, for goods in international class 9.
Complainant has an established Internet presence and maintains a website at <www.savefrom.net> on which provides its software products, specifically with a banner that states “Online Video Downloader”.
The disputed domain name was registered on July 7, 2022, and resolves to a website at <www.save-from.com> that is almost identical to Complainant’s website, and on which Respondent purports to offer a product that competes directly with Complainant, while passing off himself as Complainant with a text banner that states “Online Video Downloader I Save-From”.
There is no information available about Respondent, except for that provides in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.
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 provided convincing, uncontested evidence that it has rights in the SAVEFROM mark, established by the ownership of the trademark registration described above. Furthermore, the Complainant’s uncontested evidence is that it maintains a website at <www.savefrom.net> on which provides its software products, specifically with a banner that states “Online Video Downloader”.
The disputed domain name consists of Complainant’s SAVEFROM mark in its entirety in combination with merely the two elements “SAVE” and “FROM”, separated by a hyphen and the generic Top Level Domain (“gTLD") extension <.com>.
Complainant’s SAVEFROM mark is the initial, dominant, and only distinctive element in the disputed domain name. The hyphens add no distinguishing character to the disputed domain name.
Neither does the gTLD extension <.com> prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the SAVEFROM mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent cannot show use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
· Complainant and its predecessors have owned and operated Complainant’s Website since March 12, 2008; and Complainant’s registration of the SAVEFROM mark in the United States dates from April 5, 2016; therefore, Respondent cannot show that it has acted with bona fide intent in registering the disputed domain name on July 7, 2022;
· Respondent cannot show use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
· Respondent cannot show that it has been commonly known by the disputed domain name;
· Respondent cannot show that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s SAVEFROM mark;
· the screen capture of Respondent’s Website exhibited in an annex to the Complaint shows that Respondent is using the disputed domain name to resolve to its competing website on which Respondent touts a product called a “SaveFrom Video Downloader” and an “Online Video Downloader” which is akin to the product provided by Complainant;
· Respondent’s use of the disputed domain name is commercial and unfair use, and the disputed domain name is being used for commercial gain to mislead and divert consumers and/or tarnish the SAVEFROM mark at the expense of Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the SAVEFROM mark which predate the registration and first use of the disputed domain name and that it owned its <savefrom.net> domain name when the disputed domain name was registered.
It is most improbable that the disputed domain name which is almost identical to Complainant’s SAVEFROM mark, and Complainant’s <savefrom.net> domain name was chosen and registered without knowledge of Complainant, its mark, domain name website and business.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant and its SAVEFROM mark in mind with the intention of taking predatory commercial advantage of Complainant’s goodwill and reputation.
This finding is supported by the fact that Respondent proceeded to establish Respondent’s Website, on which it purports to offer software downloads that not only compete with the goods offered by Complainant, but the look and feel and content of Respondent’s Website is calculated to confuse Internet users and deceive them by creating the impression that Respondent’s Website is in fact Complainant’s website.
Such deceptive use of the disputed domain name for the purposes of attracting, diverting and profiting from Internet traffic intended for Complainant; and such passing off of Respondent’s products as those of Complainant constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy paragraph 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <save-from.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC, Panelist
Dated: June 21, 2023
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