DECISION

 

Sofia Roy v. Bill Bolder

Claim Number: FA2311002070422

PARTIES

Complainant is Sofia Roy ("Complainant"), represented by Robert L. Rosenthal of Howard & Howard Attorneys PLLC, Nevada, USA. Respondent is Bill Bolder ("Respondent"), Nevada, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nicktrimblesofiaroy.com>, registered with GoDaddy.com, LLC.

 

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.

 

Eduardo Magalhães Machado as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 9, 2023; Forum received payment on November 9, 2023.

 

On November 10, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <nicktrimblesofiaroy.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 November 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@nicktrimblesofiaroy.com. Also on November 16, 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.

 

A timely Response was received and determined to be complete on December 6, 2023.

 

On December 11, 2023, the Complainant submitted an Additional Submission, to which the Respondent replied by filing its own Additional Submission on December 23, 2023.

 

On December 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Eduardo Magalhães Machado as Panelist.

 

On December 21, 2023, an Additional Submission Order was issued, in view of the Panelist's understanding of the Complainant's lack of evidence, to which the Complainant filed an Additional Submission as a response to such order on January 2, 2024.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

The Complainant argues that it adopted the name SOFIA ROY in 2014 and has continually used said name for nearly a decade, claiming to own since then valid and enforceable rights in and to her name, almost a decade prior to the date Respondent registered the disputed domain name, on October 7, 2023.

 

The Complainant affirms that the Respondent's registration and use of the disputed domain name is unauthorized. In addition, the Complainant argues that the Respondent has no rights nor legitimate interests in such domain name, not being aware of any evidence suggesting the Respondent is commonly known by the name SOFIA ROY, reproduced in the disputed domain name.

 

Further, the Complainant claims that the Respondent acquired the disputed domain name in bad faith many years after the Complainant's rights in her SOFIA ROY name first arose, and the Respondent is using such domain name to defraud the public by publishing false information.

 

B. Respondent

 

The Respondent claims that there is no trademark currently registered or pending for "Sofia Roy" before the United States Patent and Trademark Office, with none of the results for said searched term being related to the Complainant.

 

In addition, the Respondent argues that a search for "Sofia Roy" on the internet returns more than 31 million results, which would imply that such name is of common use, and, thus, it would be un-registrable without any other element.

 

The Respondent affirms that the disputed domain name infringes on no trademark, copyright or patent known within the United States of America. Further, it affirms that when the domain was purchased, it was immediately put to use, not being used for cybersquatting purposes. Also, the Respondent claims that the term "Sofia Roy" is only part of the entire domain name.

 

Lastly, the Respondent affirms that the domain name sofiaroy.com is currently available for purchase, which indicates that the Complainant is not interested in presenting her public persona and controlling her public image.

 

C. Additional Submissions

 

In its first Additional Submission, the Complainant argues that Respondent's Response is deficient, because it did not contain the name, postal and e-mail addresses, and telephone and telefax numbers of the Respondent, accordingly to ICANN Rule 5(c)(ii), nor concluded with the statement pursuant to ICANN Rule 5(c)(viii), followed by the Respondent's signature or its authorized representative. Thus, the Complainant requests that the Panel disregard the Response and decide the dispute based upon the Complaint.

 

In response, the Respondent filed its Additional Submission, in which it claims that the Complainant raised only two non-substantive issues that go to the format of the response only, and not to the actual content. Thus, it requests that the Panel examine the merits of the case and issue a decision that aligns with such. In addition, the Respondent attached an amended response, in order to align it with ICANN rules.

 

The Complainant also filed a second Additional Submission, replying to the Panel's Additional Submission Order, in which it attached evidence that it makes use and it is known by the name "Sofia Roy" prior to the registration of the disputed domain name. Further, in said submission, the Complainant claims that the Respondent has not set forth any evidence that it is commonly known by the disputed domain name, and that it believes that Respondent's purported name "Bill Bolder" is not a real individual, but a pseudonym used to shield its true identity, also claiming that the Respondent's purported address is not connected to anyone by the name "Bill Bolder".

 

FINDINGS

The Complainant is a resident in Las Vegas, Nevada, and, according to the video referring to the screenshot of the evidence attached by the Complainant in its second Additional Submission ('Exhibit A – Use of Sofia Roy in Services Offering'), to which this Panel performed an independent research (See Société des Produits Nestlé SA v. Telmex Management Services WIPO D2002-0070), the Complainant is a professional MMA (Mixed Martial Fights) fighter.

 

The Complainant has common law rights in the SOFIA ROY mark, because it is Complainant's personal name, at least since 2021, according to the evidence attached by the Complainant ('Exhibit A – Use of Sofia Roy in Services Offering').

 

The disputed domain name was registered on October 7, 2023, and it currently redirects to the "Nick Trimble and Sofia Roy Tumbling Down" website, which contains negative allegations in regard to the Complainant's persona and purported actions.

 

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.

 

Identical and/or Confusingly Similar

Despite not having trademark registrations for the SOFIA ROY mark, the Panel finds that Complainant has demonstrated that it has common law rights in the SOFIA ROY mark because it is Complainant's personal name since at least 2021, and it is directly associated to Complainant's activities as an MMA fighter (See Eric Brashear v. Louis Colagiovanni, FA 1865464; See DeAnn Pladson v. Jon Tollefson, FA 1388762).

 

Moreover, the disputed domain name is identical or confusingly similar to Complainant's SOFIA ROY mark because it wholly incorporates Complainant's SOFIA ROY mark and personal name. The mere addition of the ".com" gTLD is insufficient to withstand a test of identity or confusing similarity (See Marquette Golf Club v. Al Perkins, FA 1738263). Moreover, the disputed domain name refers to another name, namely Nick Trimble, which is also insufficient to withstand a test of identity or confusing similarity, since, despite adding another term to the domain name, by checking the content of the website to which the domain name redirects, it is possible to conclude that it relates the Complainant directly to the person known by the name Nick Trimble, referring to the two persons either together or separately.

 

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's personal name and SOFIA ROY mark per Policy Paragraph 4(a)(i).

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(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 Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy Paragraph 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; See DeAnn Pladson v. Jon Tollefson, FA 1388762).

 

That being said, the Respondent has failed to provide evidence that it owns any rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant's personal name and mark. In this sense, the Complainant has made prima facie case that the Respondent lacks legitimate interests in the disputed domain name.

 

Although Respondent claims to have rightfully registered the disputed domain name and that said domain is not being used for cybersquatting purposes, considering that the disputed domain name is being used to criticize and make negative allegations directly involving the Complainant to the public, with the clear aim of defaming the Complainant, the use of the disputed domain name cannot be considered as a legitimate use in this case. It is clear that the Respondent's use of the domain name is to tarnish Complainant's name and mark (See DeAnn Pladson v. Jon Tollefson, FA 1388762).

 

In this sense, this Panel finds that the Respondent failed to demonstrate that its use of the disputed domain name is being made in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, for purposes of paragraph 4(a)(iii) of the Policy:

 

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on Respondent's web site or location.

 

That being said, Respondent registered and currently uses the disputed domain name in bad faith, because Respondent is involved in a clear attempt to denigrate the Complainant's name, intentionally harming the Complainant.

 

The Respondent's use of the Complainant's personal name in its entirety in the disputed domain name, and in the content of the website to which said domain redirects to, creates an association with the Complainant in the eyes of Internet users. By the time Internet users access the Respondent's website, they have already been exposed to the Respondent's damaging criticisms and allegations regarding the Complainant.

 

In this sense, considering that Complainant has legitimate interest in its personal name and SOFIA ROY mark, which is entirely reproduced in the disputed domain name by the Respondent, and that the Respondent has the clear aim to disparage Complainant's name, the Panel understands that the disputed domain name is being used in bad faith by the Respondent.

 

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 <nicktrimblesofiaroy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Eduardo Magalhães Machado, Panelist

Dated: January 3, 2024