GoDigital Records, LLC v. Asher Winata
Claim Number: FA1509001638836
Complainant is GoDigital Records, LLC (“Complainant”), represented by Sagar Parikh of Beverly Hills Law Corp., PC, California, USA. Respondent is Asher Winata (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globaladshare.com>, registered with Melbourne IT Ltd.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2015; the Forum received payment on September 22, 2015.
On September 23, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <globaladshare.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 September 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2015 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 email@example.com. Also on September 24, 2015, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Policy ¶ 4(a)(i)
Complainant uses the ADSHARE mark in the business of monetization service for music, film, television and sports-rights holders. Complainant has rights in the ADSHARE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,816,909, registered on July 13, 2010). Respondent’s <globaladshare.com> domain name is confusingly similar to the ADSHARE mark because it contains the entire mark, altered by only the word “global”.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <globaladshare.com> domain name and can have no rights in the <globaladshare.com> domain name because of Complainant’s rights in the ADSHARE mark.
Policy ¶ 4(a)(iii)
Respondent uses the <globaladshare.com> domain name in bad faith because it uses the resolving website to compete with Complainant. Respondent registered the domain name in bad faith because it did so with constructive knowledge of Complainant’s rights in the ADSHARE mark, as provided by Complainant’s USPTO registration.
Respondent failed to submit a Response in this proceeding. The Panel notes that the <globaladshare.com> domain name was created on July 21, 2013.
C. Response to Interlocutory Order
On November 1, 2015, the Panel requested the parties to provide further information with respect to whether or not Respondent has been commonly known by the domain name <globaladshare.com> or a name corresponding to that domain name. In response, Complainant asserted that the name of Respondent’s company is actually Global Adshare, and attached evidence in support of that allegation.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Respondent’s default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.
Complainant alleges it has rights in the ADSHARE mark through its registration with the USPTO (Reg. No. 3,816,909, registered on July 13, 2010). Complainant has provided documentation of this registration. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). As such, the Panel finds that Complainant has rights in the ADSHARE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <globaladshare.com> domain name is confusingly similar to the ADSHARE mark because it contains the entire mark, altered by only the word “global”. While Complainant makes no contentions regarding the nature of the added word “global,” past panels have found that terms which are generic, geographic, or descriptive create a confusingly similar domain name when combined with a registered mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). As the term “global” qualifies here as generic, geographic, or descriptive, the Panel finds that Respondent’s <globaladshare.com> domain name is confusingly similar to Complainant’s ADSHARE mark pursuant to Policy ¶ 4(a)(i).
Complainant does not make any specific contentions under Policy ¶ 4(c)(ii) to establish that Respondent is not commonly known by the <globaladshare.com> domain name. On the contrary, Complainant asserts in its Complaint that Respondent’s name itself is Global Adshare. Complainant’s Additional Submission also alleges, and provides evidence, that Respondent does business under the name “Global Adshare.” Panels have found that doing business under a name reflected in a disputed domain can establish rights and legitimate interests in that name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name). That Complainant owns a trademark and Respondent is not licensed to use it does not negate a legitimate rights determination. VeriSign Inc. supra. Accordingly, as the record in this case contains evidence provided by Complainant that Respondent does business as “Global Adshare”, the Panel finds that Complainant has not alleged or established that Respondent is not commonly known by the <globaladshare.com> domain name under Policy ¶ 4(c)(ii). The issue of whether Respondent’s use of this term infringes Complainant’s trademark is outside the scope of this Uniform Domain Name Dispute Resolution Policy proceeding and is a matter which can potentially be resolved in federal court.
Thus, Complainant has not satisfied Policy ¶ 4(a)(ii).
As the Panel has concluded that Respondent has rights or legitimate interests in the <globaladshare.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel need not determine whether Respondent registered or used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <globaladshare.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: November 23, 2015
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