DECISION
ULIONA LIMITED v. Host Master / 1337 Services LLC
Claim Number: FA2311002070171
PARTIES
Complainant is ULIONA LIMITED ("Complainant"), represented by Nadezhda Minakova, Virginia, USA. Respondent is Host Master / 1337 Services LLC ("Respondent"), St. Kitts & Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-savefrom.com>, registered with Tucows Domains 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.
James Bridgeman SC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 8, 2023; Forum received payment on November 8, 2023.
On November 8, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <www-savefrom.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@www-savefrom.com. Also on November 9, 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 30, 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.
RELIEF SOUGHT
Complainant requests that the disputed domain name ("Disputed Domain Name") be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant claims rights in the Disputed Domain Name established by its ownership of the United States of America registered trademark and service mark described below and use of the mark in providing Internet services on its SAVEFROM platform hosted at <www.savefrom.net> which provides users the ability to download videos for their personal use.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name because such use violates Complainant's intellectual property rights in the SAVEFROM mark established by the Complainant's registered trademark rights.
Furthermore, Complainant argues that it has been using the SAVEFROM mark long before Respondent's use of the Disputed Domain Name, which is identical and/or confusingly similar to Complainant's mark.
Additionally, Complainant asserts that it has not granted Respondent any rights to use the SAVEFROM mark or derivatives therefrom.
Complainant further asserts that it does not believe that Respondent can show that it has made any 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.
In this regard, citing Black's Law Dictionary, Abridged 5th edition, pg. 92. Complainant submits that "bona fide" is defined as "[i]n or with good faith; honestly, openly, and sincerely; without deceit or fraud."
Complainant alleges that Respondent has acted deceitfully and fraudulently when it purchased and began operating the Disputed Domain Name in order to impersonate Complainant and confuse consumers into believing that the Respondent is related to or authorized by the Complainant.
In this regard, Complainant refers to a screen capture of the content of the website to which the Disputed Domain Name resolves, which is exhibited in an annex to the Complaint, and shows that Respondent is purporting to offer video download services that complete with Complainant.
It is contended that the evidence therefore shows that Respondent is using the disputed domain name as the address of a website to provide identical and/or confusingly similar Infringing products to that of the Complainant.
Furthermore, Complainant asserts that it does not believe that the Respondent can show that it has been commonly known by the Disputed Domain Name at least for as long as the Respondent has been violating the Complainant's intellectual property rights from the date of purchase of the Disputed Domain Name on June 02, 2023.
Based again on the Complainant's long-standing use of its own domain name <savefrom.net> to host its SAVEFROM platform, Respondent likely cannot prove it is commonly known by the name Disputed Domain Name.
It is further argued by Complainant 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 and/or to tarnish the SAVEFROM mark.
The exhibited screen capture of the website to which the Disputed Domain Name resolves clearly shows that by offering Internet users the facility to download videos from various platforms, Respondent is clearly taking advantage of the Complainant's good reputation and notoriety among consumers in order to provide products which are identical and/or confusingly similar to those offered by Complainant. Complainant submits that such products are infringing Complainant's rights.
Complainant adds that while it does not know the exact structure and nature of Respondent's business, Respondent's use of the Disputed Domain Name is in fact commercial, and does not constitute fair use, and with the intent for commercial gain to mislead and divert consumers and/or tarnish the SAVEFROM mark at the expense of the Complainant.
Complainant next alleges that the Disputed. Domain Name was registered and is being used in bad faith, arguing that Respondent created its domain on June 2, 2023, long after Complainant's registration of the SAVEFROM mark on April 5, 2016.
Complainant adds that there is no doubt that Respondent has intentionally registered the Disputed Domain Name in order to receive the benefits of Complainant's good reputation and base of consumers and argues that in the light of Complainant and its predecessors using the <savefrom.net> domain since 2008 and having registered the SAVEFROM mark since 2016, it is clear that Respondent intentionally registered the Disputed Domain Name in order to offer infringing products that are identical and/or confusingly similar to those offered by Complainant while also benefiting from the notoriety of the SAVEFROM mark.
Complainant alleges that clearly, or constructively, Respondent is, or should be, aware of the identical and/or confusingly similar nature of the Disputed Domain Name to Complainant's mark and that the services that Respondent purports to offer on the website to which it resolves infringes Complainant's rights.
Complainant argues that whether actual or constructive notice is found, Respondent surely cannot deny the fact that the Disputed Domain Name is identical to or confusingly similar to the SAVEFROM mark or that Respondent's offerings on the website to which it resolves infringe Complainant's rights.
Referring again to Black's Law Dictionary (abridged 5th edition, pg. 72), Complainant submits that "bad faith" is defined as "[t]he opposite of 'good faith,' generally implying or involving the actual or constructive fraud, or a design to mislead or deceive another."
Complainant argues that Respondent's use of the Disputed Domain Name to offer competing products on the website to which it resolves is illegitimate; that it is a means to deprive Complainant of its right to the SAVEFROM mark and to confuse consumers as to the origin of the infringing products rendered under the Disputed Domain Name.
Complainant further 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 in this case is Complainant.
As described above, Complainant and its predecessors have been using and providing its services at its SAVEFROM named website hosted at <www.savefrom.net> since March 12, 2008 and has owned the registered trademark SAVEFROM since April 5, 2016.
Complainant adds that there is no coincidence that the products offered by the Respondent in relation to the Disputed Domain Name are identical and/or confusingly similar to those of the Complainant, i.e., video and multimedia downloads.
Additionally, it is no coincidence that Respondent has chosen the Disputed Domain Name which is identical and/or confusingly similar to that of the SAVEFROM mark.
Thus, Respondent should be found to have registered and be using the Disputed Domain Name in bad faith pursuant to the Policy in an intentional 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant carries on business as the owner and operator of the SAVEFROM Internet platform and owns and uses the trademark for which it holds the following trademark and service mark registration
· United States registered trademark SAVEFROM, registration number 4931103 registered on the Principal Register on April 5, 2016 for goods and services in international classes 9 and 42.
Complainant has an established Internet presence and hosts its SAVEFROM Internet platform at <www.savefrom.net> which provides users the ability to download videos for their personal use.
The Disputed Domain Name was registered on March 5, 2023 and resolves to a website on which Respondent purports to offer Internet users the facility to download videos, similar to the service provided by Complainant.
There is no information available about the Respondent, except for that provided 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.
The Registrar has confirmed Respondent, whose identity is concealed by a privacy service on the published WhoIs, is the registrant of the Disputed Domain Name.
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's Rights
Complainant has provided convincing, uncontested evidence that it has rights in the SAVEFROM mark, established by Complainant's ownership of the United States of America registered trademark and service mark described below and the reputation and goodwill that it has established in the mark by use on its SAVEFROM Internet platform.
Confusing Similarity
The Disputed Domain Name <www-savefrom.com> consists of Complainant's SAVEFROM mark in its entirety, albeit with the addition of the letters "www" and a hyphen, in combination with the generic Top Level Domain ("gTLD") extension <.com>.
Complainant's SAVEFROM mark is clearly recognizable as being the dominant and only distinctive element in the disputed domain name.
The addition of neither the letters "www" nor the hyphen, add any distinguishing character to the Disputed Domain Name nor do they prevent a finding of confusing similarity.
Similarly, the gTLD extension <.com> does not 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 in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the Disputed Domain Name arguing that
· Respondent's use of the Disputed Domain Name violates the Complainant's intellectual property rights in the SAVEFROM mark established by Complainant's registered trademark and service mark;
· Complainant has been using the SAVEFROM mark long before Respondent's use of the Disputed Domain Name, which is identical and/or confusingly similar to Complainant's mark;
· Complainant has not granted Respondent any rights to use the SAVEFROM mark or derivatives therefrom;
· Complainant does not believe that Respondent can 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 acted deceitfully and fraudulently when it purchased the Disputed Domain Name and began operating it as a website address in order to impersonate Complainant and confuse consumers into believing that Respondent is related to or authorized by Complainant;
· the screen capture of the website to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint, illustrates Complainant's allegation that Respondent is using the Disputed Domain Name purporting to offer Internet users the facility to download videos from various platforms, which are identical to the services offered by Complainant;
· Complainant asserts that it does not believe that Respondent can show that it has been commonly known by the Disputed Domain Name; and because of Complainant's long-standing use of its own domain name <savefrom.net> to host its SAFEFROM platform;
· Respondent likely cannot prove it is commonly known by the name Disputed Domain Name;
· Complainant's position is supported by the fact that Respondent has used the almost identical Disputed Domain Name to provide identical and/or confusingly similar infringing products to consumers, i.e., video and multimedia downloads;
· 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 and/or to tarnish the SAVEFROM mark;
· Respondent is clearly taking advantage of Complainant's good reputation and notoriety among consumers in order to provide products which are identical and/or confusingly similar to those offered by Complainant; and such products are infringing Complainant's rights;
· it is clear that Respondent's use of the Disputed Domain Name is in fact commercial, and does not constitute fair use;
· Respondent is intentionally using the Disputed Domain Name 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 the 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).
Registration and Use in Bad Faith
Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the SAVEFROM mark since March 5, 2023; and has long use of SAVEFROM as the name of its Internet platform.
SAVEFROM is a distinctive mark and it is most improbable that the Disputed Domain Name was chosen for any reason other than its similarity to Complainant's mark.
The Disputed Domain Name is clearly the combination of Complainant's trademark and the letters "www", signifying the term "world wide web" in a website address. The hyphen merely emphasizes Complainant's trademark within the Disputed Domain Name and is positioned where a period "." or "dot" would appear in a website address. Furthermore the use of the letters "www" are intended to infer a reference to the Internet on which Complainant provides its service.
This Panel finds therefore that on the balance of probabilities the Disputed Domain Name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's goodwill and reputation in the SAVEFROM mark.
Complainant's uncontested submission that Respondent is that the disputed domain name is being used as the address of a website on which Respondent is offering competing video download services which are identical to those offered by Complainant.
Such use is a clear infringement of Complainant's trademark rights and constitutes use of the Disputed Domain Name for passing off which is use in bad faith for the purposes of the Policy
This Panel finds therefore that by using the Disputed Domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and the produces purported to be offered by Respondent on its website.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
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 <www-savefrom.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________________________________________
James Bridgeman SC
Panelist
Dated: December 1, 2023
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