Oni Press and ONI-Lion Forge Publishing Group, LLC v. David Colson
Claim Number: FA2307002052903
Complainants are Oni Press and ONI-Lion Forge Publishing Group, LLC (“Complainants”), represented by Renee Reuter, Missouri, USA. Respondent is David Colson (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onipress.shop>, registered with NameCheap, Inc.
PANEL
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 July 12, 2023. Forum received payment on July 12, 2023.
On July 12, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <onipress.shop> 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 July 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@onipress.shop. Also on July 13, 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 August 7, 2023, 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.
Complainants request that the domain name be transferred from Respondent to Complainants.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainants submit they are related companies, sharing the same address. Oni Press is the registrant of the domain name <onipress.com> and ONI-Lion Forge Publishing Group, LLC is the owner of the trademark registration for ONI PRESS and design, which serves as a basis for the
Complaint. Complainants cross license the <onipress.com> domain name and ONI PRESS mark so that the mark is used on the website at <onipress.com>.
The Panel accepts that there is a sufficient nexus or link between Complainants such that each may claim to have rights to the <onipress.shop> domain name listed in the Complaint.
A. Complainants
Complainants, Oni Press and ONI-Lion Forge Publishing Group, LLC, provide a variety of comics, games and merchandise online via the “www.onipress.com” website.
Complainants have common law rights in the ONI PRESS word mark and rights in the ONI PRESS word and design mark through registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <onipress.shop> domain name is identical to Complainants’ marks and confusingly similar to their <onipress.com> domain name.
Respondent lacks rights or legitimate interests in the <onipress.shop> domain name since Respondent is not licensed or authorized to use Complainants’ ONI PRESS marks and there is no evidence to suggest that Respondent is commonly known by that name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to impersonate Complainants in an effort to divert Internet users to its own website featuring competing goods.
Respondent registered the <onipress.shop> domain name in bad faith with actual knowledge of Complainants’ rights in the ONI PRESS marks and uses it in bad faith by diverting Internet users to a site that masquerades as and competes with Complainants.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
DISCUSSION
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."
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) 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 Complainants’ undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences as 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’).
Identical and/or Confusingly Similar
Complainants have shown that ONI-Lion Forge Publishing Group, LLC has rights as registrant in the ONI PRESS word and design mark through registration with the USPTO (Reg. No. 6,424,300, registered on July 20, 2021) and that Oni Press has rights as licensee.
The Panel makes no finding as to whether Complainants have common law rights in the ONI PRESS mark since Complainants have provided no evidence in this regard. Nevertheless, the Panel finds Respondent’s <onipress.shop> domain name to be confusingly similar to Complainants’ registered ONI PRESS word and design mark, since it incorporates the distinctive words of the mark in their entirety. The inconsequential “.shop” generic top-level domain (“gTLD”) may be ignored under this element.
Complainants have established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or 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 customers or to tarnish the trademark or service mark at issue.
The <onipress.shop> domain name was registered on May 15, 2023, almost two years after registration of Complainants’ ONI PRESS word and design mark. It resolves to a website prominently displaying the words ONIPRESS, with the look and feel of Complainants’ “www.onipress.com” website and offering competing goods to those of Complainants that claim to be designed by the same artist whose name appears on Complainants’ website.
These circumstances, together with Complainants’ assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <onipress.shop> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainants have established this element.
Registration and Use in Bad Faith
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, including:
(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.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainants’ ONI PRESS word and design mark and “www.onipress.com” website when Respondent registered the <onipress.shop> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainants’ mark as to the source of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <onipress.shop> domain name be TRANSFERRED from Respondent to Complainant ONI-Lion Forge Publishing Group, LLC.
Alan L. Limbury, Panelist
Dated: August 8, 2023
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