Elan, LLC v. Al Perkins
Claim Number: FA1705001731999
Complainant is Elan, LLC (“Complainant”), represented by Adriano Pacifici of M Breaux Intellectual Property Law, Louisiana, U.S.A. Respondent is Al Perkins (“Respondent”), Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elanstudionola.com>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2017; the Forum received payment on May 16, 2017.
On May 17, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <elanstudionola.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2017 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@elanstudionola.com. Also on May 25, 2017, 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 June 20, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following content ions.
Complainant is an interior designer that has registered the ELAN STUDIO trade name with the Louisiana Secretary of State in furtherance of that business. See Compl., at Attached Annex A (Book # 66-1767, registered Oct. 12, 2015). Complainant has common law rights in the ELAN STUDIO mark. Respondent’s <elanstudionola.com> is confusingly similar to Complainant’s ELAN STUDIO mark because it incorporates the mark in its entirety and adds “nola”, which is a common abbreviation for New Orleans (combining “N.O.” for “New Orleans” with “L.A.” for “Louisiana”). The addition of a geographic description which describes the location of Complainant’s business (Complainant’s business is located in a neighboring town to New Orleans) does not eliminate confusing similarity.
Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ELAN STUDIO mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect to a pornographic website. Further, Respondent is attempting to extort Complainant. Complainant offered to purchase the domain name from Respondent for $500 but Respondent demanded a higher offer. See Compl., at Attached Annex C.
Respondent has registered and is using the disputed domain name in bad faith. Eight UDRP proceedings were previously filed against Respondent, each resulting in the disputed domain name being transferred to the complainant. See Compl., at Attached Annex D. Respondent has 1,400 domain names registered in Respondent’s name and is registering domain names to generate revenue. Furthermore, Respondent’s use of the disputed domain name to redirect Internet users to a pornographic website is damaging to Complainant’s reputation, and constitutes bad faith under a nonexclusive consideration of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of an interior designer .
2. Complainant has registered the ELAN STUDIO trade name with the Louisiana Secretary of State.
3. Respondent has established common law trademark rights to ELAN STUDIO from at least May 29, 2014.
4. Complainant registered the <elanstudionola.com> domain name on February 26, 2015 but due to an oversight did not renew the registration in 2017 and it was then registered by Respondent.
5. Respondent has caused the disputed domain name to redirect to a pornographic website, has attempted to extort money from Complainant in return for selling the domain name to Complainant and is a serial offender in registering domain names incorporating the trademarks of other parties.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant asserts that it has established rights in the ELAN STUDIO trade name via its registration with the Louisiana Secretary of State. See Compl., at Attached Annex A (Book # 66-1767, registered Oct. 12, 2015). However, registration of a trade name with a State is insufficient to establish trademark rights. See Navigo Energy Inc. v. Meier, FA 206312 (Forum Dec. 6, 2003) (“The Policy was intended solely to protect registered and unregistered trademarks and not trade names because trade names are not universally protected as are trademarks.”). But see The W.J. Baker Company v. c/o BAKERTUBULAR.COM, FA 1481278 (Forum Feb. 26, 2013) (finding that Complainant’s registration of the BAKER TUBULAR METAL PRODUCTS mark through its registration with the Kentucky Secretary of State was sufficient to establish rights in the mark). Complainant also does not rely on a registered trademark. However, Complainant may be able to establish common law trademark rights in ELAN STUDIO and it is to that issue that the Panel now turns.
Complainant submits that it first used the mark in commerce on or about May 29, 2014. A complainant has common law rights in a mark when it has demonstrated a secondary meaning in the mark. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as Mar. 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.). Complainant submits that it registered the disputed domain name on February 26, 2015 and used it to promote its business until registration inadvertently lapsed and Respondent picked up the domain name in 2017. Complainant provides as evidence of secondary meaning Annex B, which shows Complainant featured as a cover story in New Orleans Living Magazine. While this is the extent of Complainant’s evidence of common law rights in the mark, the Panel is prepared to act on the certification of the Complaint by Complainant’s authorized representative that its contents are complete and accurate. The Panel finds on that basis that Complainant has common law rights in the ELAN STUDIO mark for the purposes of Policy ¶ 4(a)(i) and that it has held them since May 29, 2014, the date of the first use of Complainant’s trade name.
The second question that arises is whether the <elanstudionola.com> domain name is confusingly similar to Complainant’s ELAN STUDIO mark because it incorporates the mark in its entirety and adds “nola”, which is a popular name for New Orleans (combining N.O. for New Orleans with L.A. for Lousiana). The addition of geographic terms does not negate confusing similarity but often tends to emphasise it. See BPM Prods., Inc. v. Bog, FA 125814 (Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place. Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark.”) Furthermore, generic top-level domains are irrelevant for the confusingly similar analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As the Panel agrees with Complainant that “nola” is a reference to New Orleans, which is in close proximity to location of Complainant’s business, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s ELAN STUDIO mark in which it has established common law trademark rights.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), 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); see also 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ELAN STUDIO mark and to use it in its domain name, adding only the geographic indicator “nola”, suggesting that the domain name is an official domain name of Complainant , relating to its business in New Orleans, Louisiana, which of course it was when originally registered;
(b) Complainant registered the disputed domain name on February 26, 2015 , but on the expiry of its registration in 2017, omitted to renew the registration and the domain name was acquired by Respondent;
(c) Respondent has caused the disputed domain name to redirect to a pornographic website and has also attempted to extort money from Complainant in return for selling the domain name to Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its ELAN STUDIO mark. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Al Perkins” as the registrant name. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the ELAN STUDIO mark can further support a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, the Panel finds that Respondent is not commonly known by the <elanstudionola.com> domain name;
(f) Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services. Complainant submits that Respondent is using the disputed domain name to redirect Internet users to a pornographic website. Such a use does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). The Panel notes that the disputed domain name, according to Complainant’s submission, has resolved to a pornographic website, although Complainant has not provided evidence of this use having occurred. The Panel notes that Complainant’s authorized representative has certified that the contents of the Complaint are complete and accurate and the Panel will act on that assurance. Accordingly, the Panel finds that Respondent has not used and is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use;
(g) Complainant also argues that Respondent is using the disputed domain name to extort money from Complainant. Willingness to sell a disputed domain name to a complainant or a competitor for more than out-of-pocket expenses demonstrates that Respondent lacks rights or legitimate interests in the domain name. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Complainant provides email correspondence between itself and Respondent whereby Respondent rejected Complainant’s offer to buy back the disputed domain name for $500. Compl., at Attached Ex. C. Respondent replied that it was “seeking a significantly higher price than [Complainant’s] offer”. Id. Complainant submits that $500 is a fair price for the domain name and would adequately cover Respondent’s registration fees. Id. Based on this evidence, the Panel finds that Respondent was willing and seeking to sell the disputed domain name to Complainant for an inflated price and therefore that Respondent lacks rights and legitimate interests in the domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in a pattern of bad faith registration and therefore that Respondent has registered the disputed domain name in bad faith. Previous adverse UDRP decisions against Respondent constitute evidence that the disputed domain name in the current proceeding has been registered and is being used in bad faith. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). A search on the ADR Forum database shows that Respondent “Al Perkins” has been required to transfer a number of domain names in previous UDRP disputes. E.g., Compl., at Attached Annex D. Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith registration and use and that the disputed domain name has been registered and is being used in bad faith.
Secondly, Complainant argues that Respondent is using the disputed domain name to resolve to a pornographic website and therefore that it has registered and is using the disputed domain name in bad faith. Use of a disputed domain name to redirect Internet users to a pornographic website supports a finding of bad faith. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The Panel again notes that the disputed domain name is alleged to have resolved to a pornographic website, and that, although Complainant has provided no evidence of such use, the Panel will accept the certification by Complainant’s authorized representative that the contents of the Complaint are complete and accurate. Therefore, and on that basis, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ELAN STUDIO mark and in view of the conduct that Respondent has engaged in since registering the <elanstudionola.com> domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <elanstudionola.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 26, 2017
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