DECISION

 

Metro-Goldwyn-Mayer Studios Inc. v. Victor De Bose / Victory Victorious Production

Claim Number: FA2311002069982

 

PARTIES

Complainant is Metro-Goldwyn-Mayer Studios Inc. ("Complainant"), represented by Jill M. Pietrini of Sheppard, Mullin, Richter, and Hampton, LLP, California, USA. Respondent is Victor De Bose / Victory Victorious Production ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pinkpanthercleaningservice.com> ("Domain Name"), registered with Launchpad.com Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 7, 2023; Forum received payment on November 7, 2023.

 

On November 7, 2023, Launchpad.com Inc. confirmed by e-mail to Forum that the <pinkpanthercleaningservice.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com 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 November 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@pinkpanthercleaningservice.com. Also on November 8, 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 November 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be cancelled.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Metro-Goldwyn-Mayer Studios Inc., is a movie studio that is responsible for producing, distributing and holding the relevant intellectual property for a series of highly successful motion pictures collectively known as the "Pink Panther motion pictures", generally featuring as main characters the Pink Panther. Complainant has rights in the THE PINK PANTHER mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,122,758, registered July 24, 1979). Respondent's <pinkpanthercleaningservice.com> domain name is identical or confusingly similar to Complainant's THE PINK PANTHER mark as it incorporates the distinctive portion of the mark, merely deleting the word "the" and adding the generic terms "cleaning service" and the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <pinkpanthercleaningservice.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its THE PINK PANTHER mark in the Domain Name. Respondent does not use the Domain Name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent purports to offer a cleaning service from the website accessible from the Domain Name ("Respondent's Website") but Complainant provides evidence that Respondent does not actually offer cleaning services; specifically Respondent's Website uses a fake address, Complainant has been unable to identify any reviews for Respondent's business and Respondent's registration for a corporation corresponding to the Domain Name has been invalid since 2008, well before the Domain Name was registered.

 

Respondent registered and uses the <pinkpanthercleaningservice.com> domain name in bad faith. Respondent uses the confusingly similar nature of the Domain Name in attract Internet users for commercial gain in bad faith by purporting to attract users to a business associated with Complainant but no actual business exists.  Finally, Respondent registered the Domain Name with actual knowledge of Complainant's rights in the well-known THE PINK PANTHER mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the THE PINK PANTHER mark.  The Domain Name is confusingly similar to Complainant's THE PINK PANTHER mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the THE PINK PANTHER mark based on registration with the USPTO (e.g. Reg. No. 1,122,758, registered July 24, 1979). Registration of a mark with the USPTO sufficiently confers a complainant's rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO").").

 

The Panel finds that the <pinkpanthercleaningservice.com> domain name is confusingly similar to Complainant's THE PINK PANTHER mark as it consists of the distinctive portion of the THE PINK PANTHER mark (merely removing the word "the") and with the addition of the descriptive terms "cleaning service" and the ".com" gTLD.  The addition of a descriptive term and a gTLD to the distinctive portion of a trademark fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.");  see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case and Respondent has failed to show that it does have rights or legitimate interests in the Domain Name.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the THE PINK PANTHER mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Victor De Bose / Victory Victorious Production" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

Complainant asserts that Respondent's use of the Domain Name is to pass itself off as the Complainant to benefit financially, which does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). The Domain Name resolves to the Respondent's Website that purports to advertise a cleaning service operating under the PINK PANTHER Mark.  However, the Complainant provides uncontested evidence that Respondent does not actually operate a cleaning service, noting the use of a fake address and the absence of any reviews, online or otherwise, about Respondent's business (noting that the Domain Name has been registered for 3 years). Given these facts, in the absence of any information from Respondent about its business (which the Respondent has chosen not to provide) the Panel cannot conclude from the Respondent's Website alone that Respondent is operating a legitimate business (as opposed to creating a website for fraudulent purposes), let alone made a bona fide offering of goods and services or a legitimate non-commercial use of the Domain Name.

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, November 30, 2019, Respondent had actual knowledge of Complainant's THE PINK PANTHER mark. The THE PINK PANTHER mark is incredibly well known having been used by Complainant and its predecessors in title for a series of very successful motion pictures, with and it is implausible that an entity would choose to register a Domain Name containing the words "pink panther" absent an awareness of the Complainant and its use of and reputation in the THE PINK PANTHER mark. In the absence of rights or legitimate interests of its own the Panel finds that Respondent's registration of the Domain Name in awareness of the THE PINK PANTHER mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

In the absence of any evidence of the legitimacy of the Pink Panther cleaning services advertised on the Respondent's Website, the Panel finds, on the balance of probabilities, that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's THE PINK PANTHER mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that purport to pass itself off as Complainant (or as an entity associated with Complainant) to take advantage in some way of any confusion between the Domain Name and the Complainant for bad faith purposes.  Use of a domain name in this manner is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv).  See Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant's website to its own website for commercial gain because the respondent likely profited from this diversion scheme).  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pinkpanthercleaningservice.com> domain name be CANCELLED.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: November 29, 2023