Fifty Shades Limited v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1611001704616
Complainant is Fifty Shades Limited (“Complainant”), represented by Sue Charles of ACK Media Law LLP, United Kingdom. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fiftyshades2.com>, registered with TLD Registrar Solutions 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2016; the Forum received payment on November 29, 2016.
On November 30, 2016, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <fiftyshades2.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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 December 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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 firstname.lastname@example.org. Also on December 1, 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 December 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in FIFTY SHADES and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells books and other goods by reference to the trademark FIFTY SHADES;
2. The trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,468,618, registered January 21, 2014;
3. The disputed domain name was created on September 7, 2015 and resolves to a website which reproduces the text of books sold by reference to the trademark; and
4. There is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark, to register any domain name incorporating the trademark, or to reproduce works in which it owns copyright.
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.
That said, after review of the Complaint, Panel found it appropriate to issue a Panel Order as now described.
Whilst otherwise coherent, the Complaint omitted supporting material in the form of (a) a copy of its USPTO registration, and (b) screenshots of the resolving website. In response to a Panel Order dated January 10, 2017 Complainant provided further material as described hereunder, none procedurally requiring the Panel to invite comment thereon by Respondent.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. The Complaint referenced a USPTO registration for FIFTY SHADES and a copy of the USPTO registration certificate was supplied in answer to the Panel Order. The Panel is thus satisfied that Complainant has trademark rights in that expression.[i]
The disputed domain name takes the trademark and appends non-distinctive matter in the form of the numeral “2” and the general top-level domain (“gTLD”),“.com”. For the purposes of comparison the gTLD can be disregarded.[ii] The addition of the numeral “2” does not affect the identity of the trademark which remains the recognizable element of the domain name.[iii]
Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information does not provide any suggestion that Respondent might be commonly known by the disputed domain name.[v]
There is no evidence that Respondent has relevant trademark rights. Further, Complainant asserts that it has not licensed or otherwise authorized Respondent to use the trademark.
At present the domain name does not resolve to an active website. In response to the Panel Order, Complainant provided a written description of how the resolving website stood at the time the Complaint was filed. It further provided cached images of the website when it was active derived from the Internet archive commonly known as the “Wayback Machine” (https://archive.org/web).
Books sold by Complainant by reference to the trademark are the works of the author, E. L. James. It is asserted that Complainant is the owner of the copyright in those works (“the copyright works”) and the owner of other intellectual rights, aside from the trademark where ownership is already proven.
It is asserted that the website, when active, reproduced the copyright works, in whole and part, without Complainant’s authority. Complainant argues that Respondent lacks a right or legitimate interest in the disputed domain name since without that authority it cannot make a bona fide offering of goods under paragraph 4(c)(i) of the Policy, nor make fair use under paragraph 4(c)(iii).
In the absence of a reasoned Response, Panel accepts that Complainant is the owner of the copyright works and accepts the submission that Respondent is not authorized to reproduce those works. Accordingly, the matter is akin to those cases where panels have found that a respondent who operates a confusingly domain name lacks rights and legitimate interests when they offer to sell or distribute the complainant’s goods without a license to do so.[vi]
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
In this case Panel finds, as separate matters, registration in bad faith and use in bad faith without the need to reply upon any of those four scenarios of “per se” bad faith. Registration in bad faith is manifest from the fact that Respondent targeted the copyright works. Use in bad faith is evidenced by the unauthorized reproduction of those works (there being no suggestion in the evidence that copyright has expired).
Panel finds the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fiftyshades2.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 17, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[iii] See, for example, Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (FORUM July 20, 2015) holding <pandora1.com> confusingly similar to the PANDORA trademark; see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (FORUM July 7, 2015) finding that domain name syntax prohibits spaces.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[v] See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (FORUM Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”
[vi] See, for example, Fadal Engineering, LLC v. Strizich, FA 1581942 (FORUM Nov. 13, 2014) finding that respondent’s use of the disputed domain to sell products related to complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”; see also Keihin Corp. v. Youli Ltd., FA 1106190 (FORUM Dec. 18, 2007) finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business.
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