Shaw Cablesystems G.P. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1603001666578
Complainant is Shaw Cablesystems G.P. (“Complainant”), represented by Alexia Walter, Canada. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuckshaw.com>, registered with Internet Domain Service BS Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2016; the Forum received payment on March 23, 2016.
On April 25, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <fuckshaw.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 April 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2016 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 April 26, 2016, 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 May 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant, Shaw Cablesystems G.P., is involved in the telecommunication industry in Canada and uses the SHAW mark to promote its cable television brand. Complainant has registered the SHAW mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA597803, registered Dec. 7, 2003). The <fuckshaw.com> domain name is confusingly similar to the SHAW mark. The SHAW mark remains the salient feature of the disputed domain name even with the addition of the non-distinctive and generic word “fuck,” and the generic top-level domain (“gTLD”) “.com.”
Respondent, Domain Admin / Whois Privacy Corp., does not have rights or a legitimate interest in the <fuckshaw.com> domain name. Respondent’s has registered the disputed domain name for the purpose of defaming and tarnishing Complainant’s brand.
Respondent has registered the <fuckshaw.com> domain name in bad faith. Respondent’s disputed domain name redirects internet users to a video criticizing Complainant’s business damaging its reputation and brand.
Respondent failed to submit a Response in this proceeding.
Complainant is involved in the telecommunication industry in Canada and uses the SHAW mark to promote its cable television brand. Complainant has registered the SHAW mark with the CIPO (e.g., Reg. No. TMA597803, registered Dec. 7, 2003). The <fuckshaw.com> domain name is confusingly similar to the SHAW mark.
Respondent registered the <fuckshaw.com> domain name on January 5, 2015.
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(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 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 (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.”).
Complainant has rights in the SHAW mark under Policy ¶ 4(a)(i) through registration with the CIPO. See, e.g., X-SCREAM VIDEO PRODUCTIONS INC. v. IT Manager, FA 1619522 (Forum June 25, 2015).
Respondent’s <fuckshaw.com> domain name is confusingly similar to the SHAW mark under Policy ¶ 4(a)(i). The SHAW mark remains the salient feature of the disputed domain name. See Koninklijke Phillips Elecs. v. Snelling Domains Best, D2002-1041 (WIPO Dec. 16, 2002) (a confusing similarity existed between the domain name <fuckphilips.com> and the “Philips” trademark).
Complainant must first present a prima facie case 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the <fuckshaw.com> domain name.
Complainant contends that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Complainant asserts, without providing evidence, that Respondent’s disputed domain name resolves to a YouTube video entitled “The First Honest Cable Company,” which is critical and disparaging of Complainant. Complainant, therefore, has failed to show Respondent’s use of the <fuckshaw.com> domain name; and, thus, has failed to show a lack of rights and legitimate interests in the domain name.
Complainant, likewise, has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant 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 <fuckshaw.com> domain name REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 4, 2016
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