DECISION

 

Guinness World Records Limited v. soulaiman kharraz

Claim Number: FA2501002134241

PARTIES

Complainant is Guinness World Records Limited ("Complainant"), represented by Robert Leighton of Goldberg Kohn Ltd., Illinois, USA. Respondent is soulaiman kharraz ("Respondent"), Morocco.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guinness-records.com>, 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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2025; Forum received payment on January 8, 2025.

 

On January 9, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <guinness-records.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 January 9, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2025 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@guinness-records.com. Also on January 9, 2025, 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 January 31, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant has been selling its famous Guinness World Records books for over 60 years and is recognized worldwide as the authority on record-breaking achievements. Complainant holds trademark rights in the GUINNESS WORLD RECORDS mark in the United States and numerous other countries, inter alia, through its registration with the USPTO (e.g., Reg. No. 2,824,273, registered March 23, 2004). Since publishing the first edition in 1955, Complainant has sold over 140 million copies of its books in more than 100 countries, making it one of the bestselling copyright titles of all time. The disputed domain name is confusingly similar to Complainant's GUINNESS WORLD RECORDS mark, as it incorporates a substantial portion of Complainant's trademark without any distinguishing elements.

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the GUINNESS WORLD RECORDS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. The disputed domain name resolves to a website hosting content for an entirely unrelated entity, Arbo Marketing, which does not appear to be the functioning website of a real business. The use of a domain name to resolve to a placeholder website does not constitute a legitimate use or a bona fide offering of goods or services. Even if the website were not a placeholder, using a domain name to resolve to a website for an unrelated business does not constitute a legitimate use.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent has disrupted Complainant's business by diverting users to its purported commercial website, which hosts content for an entirely unrelated entity, Arbo Marketing, that does not appear to be the functioning website of a real business. Respondent had actual or constructive knowledge of Complainant's rights in the GUINNESS WORLD RECORDS mark prior to registering the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on December 7, 2024.

 

2. Complainant has established rights in the GUINNESS WORLD RECORDS mark in the United States and numerous other countries, inter alia, through its registration with the USPTO (e.g., Reg. No. 2,824,273, registered March 23, 2004).

 

3. Respondent uses the disputed domain name to direct Internet users to a website hosting content for an entirely unrelated entity, Arbo Marketing, which does not appear to be the functioning website of a legitimate business.

 

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 claims rights in the GUINNESS WORLD RECORDS mark in the United States and numerous other countries, inter alia, through its registration with the USPTO (e.g., Reg. No. 2,824,273, registered March 23, 2004). Complainant provides copies of its USPTO registrations for the GUINNESS WORLD RECORDS marks. Accordingly, the Panel finds that Complainant has established rights in the GUINNESS WORLD RECORDS mark under Policy ¶ 4(a)(i).

 

Next, Complainant contends that the disputed domain name, <guinness-records.com>, is confusingly similar to the GUINNESS WORLD RECORDS mark. The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant's GUINNESS WORLD RECORDS mark, as it incorporates the substantial elements "GUINNESS" and "RECORDS" from Complainant's trademark without any distinguishing elements. Therefore, the Panel finds that the disputed domain name is confusingly similar to the GUINNESS WORLD RECORDS mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS data lists "soulaiman kharraz" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Complainant asserts that Respondent uses the disputed domain name to direct Internet users to a website hosting content for an entirely unrelated entity, Arbo Marketing, which does not appear to be the functioning website of a real business. Complainant provides a screenshot of the website to which the disputed domain name resolves, showing a superficial display of generic stock images and advertised "services," yet almost no substantive information about Arbo Marketing is provided, including the absence of contact details. Moreover, the "Contact" page still contains placeholder or template text: "You can modify and use this template for your website. Header image has a parallax effect. Total 3 HTML pages included in this template." The Panel finds that using a domain name to resolve to a placeholder website does not constitute a legitimate use or a bona fide offering of goods or services. See Chime Financial, Inc. v. Barton, Ashley, FA2103222 (Forum July 24, 2024) (holding that a respondent had no legitimate interest and registered a domain in bad faith where the resolving website contained "placeholder text" and non-functioning social media icons).

 

Even if the website associated with the disputed domain name were not a placeholder, the Panel finds that Respondent's use of Complainant's mark and the goodwill associated with it to attract Internet users to an unrelated business does not constitute a bona fide offering of goods or services. See Todd McFarlane and TMP International LLC v. tim wang, FA2073747 (Forum January 1, 2024) ("Complainant submits that Respondent used the disputed domain name to direct Internet users to a website entitled "Overstock Sale" selling various Christmas Holiday ornaments and decorations unrelated to Complainant's business. … The Panel finds that Respondent's use of the disputed domain name is deceptive and confusing and amounts to passing off. As such it cannot amount to a bona fide offering of goods and services or a non-commercial legitimate or fair use.").

 

The Panel finds that Complainant has made out a prima facie case based on the considerations above. All of these factors contribute to establishing a prima facie case against Respondent. As Respondent has neither filed a Response nor attempted to rebut the prima facie case against it by any other means, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent disrupted Complainant's business by diverting users to its purported commercial website, which hosts content for an entirely unrelated entity, Arbo Marketing, that does not appear to be the functioning website of a real business. As previously noted, Complainant provides a screenshot of the website to which the disputed domain name resolves, showing a superficial display of generic stock images and advertised "services," yet almost no substantive information about Arbo Marketing is provided, including the absence of contact details. The Panel finds that Respondent uses the disputed domain name to attempt to redirect Internet users by exploiting the goodwill associated with Complainant's GUINNESS WORLD RECORDS mark for commercial gain, and therefore, Respondent registered and uses the disputed domain name in bad faith. See Todd McFarlane and TMP International LLC v. tim wang, FA 2073747 (Forum January 1, 2024) ("Respondent disrupted Complainant's business by diverting users to its purported scam commercial website to sell products unrelated to the complainant's business. The Panel finds that Respondent uses the disputed domain name to attempt to redirect Internet users by passing itself off as Complainant for commercial gain, and thus Respondent registered and used the disputed domain name in bad faith.").

 

Next, Complainant argues that Respondent registered the disputed domain name with constructive or actual notice of Complainant's rights in the GUINNESS WORLD RECORDS mark given the longstanding use of the mark and the confusing similarity of the disputed domain name to Complainant's mark. While constructive notice alone is insufficient to establish bad faith, actual knowledge may support a finding of bad faith registration.

 

The Panel notes that Complainant has been selling its renowned Guinness World Records books for over 60 years and is globally recognized as the authority on record-breaking achievements. Complainant has sold over 140 million copies of its books in more than 100 countries, making it one of the bestselling copyrighted titles of all time. Complainant has been using the GUINNESS WORLD RECORDS mark in the United States since as early as 2002, over two decades ago. Given the widespread reputation and recognition of Complainant's mark, the Panel infers that Respondent had actual knowledge of Complainant's rights in the GUINNESS WORLD RECORDS mark at the time of registering the disputed domain name. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith under 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 <guinness-records.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: January 31, 2025