DECISION

 

Come and See Foundation, Inc. v. Abdur Rouf

Claim Number: FA2407002106540

 

PARTIES

Complainant is Come and See Foundation, Inc. ("Complainant"), represented by Allison Joelle Harvill of Envisage Law, North Carolina, USA. Respondent is Abdur Rouf ("Respondent"), Bangladesh.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thechosentv.online> ("Domain Name"), registered with NameCheap, 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 July 16, 2024; Forum received payment on July 16, 2024.

 

On July 16, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <thechosentv.online> 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 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2024 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@thechosentv.online. Also on July 22, 2024, 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 13, 2024, 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 transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, is the owner of all IP in the historical drama television series The Chosen which has aired since 2017, telling the story of Jesus of Nazareth. Complainant promotes its television show through various means including its domain name <thechosen.tv>. Complainant has rights in the THE CHOSEN mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 6,473,942, registered September 7, 2021). Respondent's <thechosentv.online> domain name is confusingly similar to Complainant's mark because it incorporates the THE CHOSEN mark in its entirety and merely adds the term "tv" and the ".online" generic top-level domain ("gTLD").

 

Respondent has no legitimate interests in the <thechosentv.online> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent to use the THE CHOSEN mark. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to its website ("Respondent's Website") which purports to offer unauthorized streaming of the Complainant's The Chosen television show, thus facilitating copyright infringement.

 

Respondent registered and uses the <thechosentv.online> domain name in bad faith. Respondent registered the Domain Name in order to disrupt Complainant's business and divert customers for commercial gain. Finally, Respondent registered the Domain Name with actual knowledge of Complainant's rights in the THE CHOSEN mark given the purported use of the Domain Name to offer unauthorized streaming of the Complainant's television show.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the THE CHOSEN mark. The Domain Name is confusingly similar to Complainant's THE CHOSEN mark. Complainant has established that Respondent lacks rights or legitimate interests in 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 asserts rights in the THE CHOSEN mark through its registration of the mark with the USPTO (e.g., Reg. No. 6,473,942, registered September 7, 2021). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the <thechosentv.online> domain name is confusingly similar to Complainant's THE CHOSEN mark because it wholly incorporates Complainant's THE CHOSEN mark while adding the descriptive term "tv" and the ".online" gTLD to form the Domain Name. These changes are insufficient to distinguish the Domain Name from the THE CHOSEN mark under Policy ¶ 4(a)(i). See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate the complainant's THOMSON REUTERS mark while merely adding the term "scie," "ahci," "sci," or "ssci."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

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.

 

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 CHOSEN 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 "Abdur Rouf" 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).

 

The Domain Name resolves to the Respondent's Website which is a website that purports to allow visitors to illegally stream the Complainant's The Chosen television show. This action facilitates copyright infringement. The use of a domain name containing the THE CHOSEN Mark to resolve to a website that, for commercial gain, assists and encourages individuals to facilitate copyright infringement is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) ("It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant's systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name."); see also Licensing IP Int'l S.a.r.l. v. CM Techs., LLC, FA 1969296 (Forum Nov. 22, 2021) (holding that resolution of disputed domain to a "website that purports to allow visitors to download videos" in such a manner to "facilitate copyright infringement" is "not a bona fide offering of goods or services or legitimate non-commercial or fair use per Policy ¶¶ 4(c)(i) and (iii)"). 

 

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 date of registration of the Domain Name, January 20, 2024, Respondent had actual knowledge of Complainant's THE CHOSEN mark as the Respondent's Website makes references to Complainant's services. Indeed, its purported business model relies on the exploitation of copyright in the Complainant's The Chosen television show. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's THE CHOSEN Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that facilitates copyright infringement of the Complainant's copyrighted material. Use of a disputed domain name to encourage and assist users in infringing copyright may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (holding that using complainant's intellectual property to attract internet users to website to provide unauthorized access to complainant's "copyrighted material and data" was bad faith under Policy ¶ 4(b)(iii) and (iv)).

 

The Panel finds Complainant has satisfied 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 <thechosentv.online> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: August 14, 2024