DECISION

 

Guinness World Records Limited v. SASAN. MARVASTI / climaxair

Claim Number: FA2502002141593

PARTIES

Complainant is Guinness World Records Limited ("Complainant"), represented by Robert Leighton of Goldberg Kohn Ltd., Illinois, USA. Respondent is SASAN. MARVASTI / climaxair ("Respondent"), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <guinness-world-record.com> and <guinnesswordrecord.com> (collectively "Domain Names"), 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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 24, 2025; Forum received payment on February 24, 2025.

 

On February 24, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <guinness-world-record.com> and <guinnesswordrecord.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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-world-record.com, postmaster@guinnesswordrecord.com. Also on February 25, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 18, 2025, 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 Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

Respondent failed to submit a formal Response by the deadline of March 17, 2025.  However, on February 26, 2025 Respondent sent an e-mail to Forum, the relevant contents of which are extracted below:

 

"I recently received notice regarding the UDRP complaint filed by Guinness World Records. I want to confirm that the domains in question have been cancelled and deleted."

 

The Respondent then sets out the details of the Domain Names and states that they were deleted on February 25, 2025. Respondent then says:

 

"I want to clarify that I had no intention of infringing on any trademarks or causing any concerns. I sincerely apologize for any inconvenience this may have caused.

 

Please confirm if any further action is needed on my part to close this matter."

 

On March 18, 2025 Respondent sent a further document, titled "Response to UDRP Complaint - Confirmation of Domain Cancellation" to Forum, which the Panel has exercised its discretion to consider. Respondent again states that it did not intend to infringe on any trademarks and again states that the Domain Names were deleted, annexing what is said to be an e-mail from the Registrar indicating that the Domain Names were deleted.

 

The veracity of the Respondent's statements will be discussed later in the decision but the Panel notes that in certain cases where the Respondent has clearly consented to the transfer of the Domain Names to the Complainant, Panel is authorized to forgo traditional UDRP analysis. In the present case, while Respondent is clearly seeking a resolution of the proceeding including potentially cancellation of the Domain Names, it is not clear whether they are prepared to consent to the transfer of the Domain Names to the Complainant and as such it is not appropriate to issue an order for relief without being satisfied that the elements of the UDRP are satisfied.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a United Kingdom company that for 60 years has been recognized as an authority on record-breaking achievements, including offering a variety of publications (including books) under the GUINNESS WORLD RECORDS mark. Complainant claims rights in the GUINNESS WORLD RECORDS mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,824,273 registered March 23, 2004).  The disputed domain names <guinness-world-record.com> and <guinnesswordrecord.com> are confusingly similar because they contain Complainant's mark and merely add hyphens and the ".com" generic top-level domain ("gTLD") and remove the letter "s" to create a minor misspelling.

        

Respondent lacks rights or legitimate interests in the <guinness-world-record.com> and <guinnesswordrecord.com> domain names.  Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GUINNESS WORLD RECORDS mark in any way. Additionally, Respondent fails to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Names to host third-party pay-per-click advertisements.

 

Respondent registered and uses the <guinness-world-record.com> and <guinnesswordrecord.com> domain names in bad faith. Respondent uses the Domain Names to host links to third-party websites for commercial gain.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding however the Panel will have regard to the communications of February 25, 2025 and March 18, 2025. In those communications, Respondent states that there is no need to continue the proceeding as the Domain Names have been cancelled.

 

The Panel notes that since the Registrar had already placed the domain name on Registrar Lock, it would not be not possible for Respondent to arrange for the cancellation of the Domain Names.

 

Paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), states a Panel may conduct limited factual research regarding disputed domain names noting that:

 

"Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases."

 

In the present case the Panel has conducted a Whois search with the Registrar for the Domain Names which confirmed that the Domain Names were still registered to the Respondent. The Panel has also visited the websites linked to the Domain Names which being pay-per-click websites managed by the Registrar, were still active. As such the Panel is not satisfied that the Domain Names were cancelled as submitted by the Respondent and will proceed with the determination of whether the elements in the Policy are satisfied.

 

FINDINGS

Complainant holds trademark rights for the GUINNESS WORLD RECORDS mark.  Each of the Domain Names is confusingly similar to Complainant's GUINNESS WORLD RECORDS mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 GUINNESS WORLD RECORDS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. No. 2,824,273 registered March 23, 2004). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ("Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that each of <guinness-world-record.com> and <guinnesswordrecord.com> is confusingly similar to the GUINNESS WORLD RECORDS mark as each of the Domain Names consist of a minor misspelling of (caused by removing a letter from and adding hyphens to) the otherwise wholly incorporated GUINNESS WORLD RECORDS mark. Respondent also adds the ".com" gTLD to the Domain Names.  Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding the respondent's <microssoft.com> domain name to be confusingly similar to the complainant's MICROSOFT mark because they differ by only one letter, and "such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)"); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) ("Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.").  

 

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 Names. 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 Names 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 Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GUINNESS WORLD RECORDS 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, FA1504001613011 (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, FA1505001621573 (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 "SASAN. MARVASTI / climaxair" as the 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 Names in accordance with Policy ¶ 4(c)(ii).

 

The Domain Names resolve to websites featuring pay-per-click links to third party websites for which the Respondent likely receives revenue. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering."); see also Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).

 

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 Names (January 29, 2025), Respondent had actual knowledge of Complainant's GUINNESS WORLD RECORDS mark. The GUINNESS WORLD RECORDS mark has a considerable reputation and there is no obvious explanation, and none has been provided by Respondent, for a party to register two domain names that consist of misspellings of the registered GUINNESS WORLD RECORDS mark and redirect them to pay-per-click websites absent any awareness of Complainant and its GUINNESS WORLD RECORDS mark (and intention to capitalize on Complainant's reputation in its GUINNESS WORLD RECORDS mark). 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 Names in bad faith to create confusion with Complainant's GUINNESS WORLD RECORDS Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites containing advertisements and links to third party websites for commercial gain.  Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) ("Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant's business and respondent is likely collecting fees.").  

 

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 <guinness-world-record.com> and <guinnesswordrecord.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 19, 2024