Ricochet Productions Limited v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1904001838662
Complainant is Ricochet Productions Limited (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, Washington DC, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <supernanny.com>, registered with Media Elite Holdings Limited.
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.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on April 12, 2019; the Forum received payment on April 12, 2019.
On April 16, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <supernanny.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2019 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@supernanny.com. Also on April 16, 2019, 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 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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.
A. Complainant
Complainant’s “Supernanny” television series premiered July 7, 2004 in the United Kingdom. The “Supernanny” television series has been viewed by millions of households across the world and has garnered significant media attention as a result. Complainant has rights in the SUPERNANNY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,147,001, registered Sep. 19, 2006). Respondent’s <supernanny.com> domain name is confusingly similar to Complainant’s mark as it merely adds the “.com” generic top-level domain (“gTLD”) to the wholly incorporated mark.
Respondent has no rights or legitimate interests in the <supernanny.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to paid advertisements to generate profit.
Respondent registered and uses the <supernanny.com> domain name in bad faith as Respondent has a well-established pattern of bad faith, having been involved in at least twenty-three UDRP proceedings. Further, Respondent commercially benefits from the disputed domain name by diverting Internet users looking for Complainant and profiting from click through links that target Complainant and other advertising. Finally, the notoriety of Complainant’s SUPERNANNY mark and Respondent’s use of the disputed domain name to display links related to Complainant demonstrates that Respondent had actual knowledge of Complainant’s rights in the mark prior to the time Respondent acquired the disputed domain name in 2018.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <supernanny.com> domain name.
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 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”).
Complainant claims rights in the SUPERNANNY mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,147,001, registered Sep. 19, 2006). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the SUPERNANNY mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <supernanny.com> domain name is confusingly similar to Complainant’s mark as it merely adds the “.com” gTLD to the wholly incorporated mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See 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 that the <supernanny.com> domain name is identical and/or confusingly similar to the SUPERNANNY mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <supernanny.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS information, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information identifies “Domain Administrator / Fundacion Privacy Services LTD” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. The Panel finds that Respondent is not commonly known by the <supernanny.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <supernanny.com> domain name to redirect users to paid advertisements to generate profit. Using a domain name to display hyperlinks to services relating to a complainant generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides various screenshots of the resolving webpage, which display links such as “Kids Behavior Problems” and “Supernanny TV Show.” The Panel finds that Respondent lacks rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that while the WHOIS information shows that the domain name was initially registered on January 24, 2000, Respondent did not acquire the <supernanny.com> domain name until August 13, 2018. Even if the initial registration of a domain name predates a complainant’s rights in a mark, a subsequent acquisition of the same domain name by a respondent does not automatically confer rights and legitimate interests in the domain name. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1735270 (Forum July 8, 2017) (holding that Respondent lacks rights and legitimate interests in the domain name because while the initial registration of the domain name predated Complainant’s rights in the JIREH mark, Respondent failed to respond to the Complaint. Thus, Respondent could not rebut Complainant’s assertion that it subsequently acquired the domain name in 2011, nor could it explain why it has rights and legitimate interests in the domain name). Here, Complainant provides the historical WHOIS information to show that the registration information changed multiple times after the initial registration, concluding with the final change to the current WHOIS information on August 13, 2018. Respondent did not acquire the domain name until August 13, 2018. The Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant contends that Respondent has a well-established pattern of bad faith, having been involved in at least twenty-three UDRP proceedings. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant provides a list of UDRP cases against “Domain Administrator / Fundacion Privacy Services LTD,” the listed Respondent in the current proceeding. Respondent’s prior adverse UDRP decisions are evidence of bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent commercially benefits from the disputed domain name by diverting Internet users looking for Complainant and profiting from click through links that target Complainant and other advertising. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides various screenshots of the resolving webpage, which display links such as “Kids Behavior Problems” and “Supernanny TV Show.” The Panel finds that Respondent attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SUPERNANNY mark at the time of registering the <supernanny.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the notoriety of Complainant’s SUPERNANNY mark and Respondent’s use of the disputed domain name to display links related to Complainant. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Relatedly, Complainant claims that Respondent did not acquire the <supernanny.com> domain name until August 13, 2018 despite the initial registration of the domain name in the year 2000. A subsequent acquisition of a domain name by a respondent after a complainant acquires rights in a mark can evince bad faith under Policy ¶ 4(a)(iii). See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1735270 (Forum July 8, 2017) (“Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name”) (citing Section 3.8.1 of the WIPO Overview 3.0). In the above cited case, the Panel relied on a search of The Wayback Machine to show that the content on the resolving webpage changed in 2011, and thus accepted the complainant’s claim that the domain name changed hands at that time. Here, as noted under the Policy ¶ 4(a)(ii) analysis, Complainant provides the historical WHOIS information to show that the registration information changed multiple times after the initial registration, concluding with the final change to the current WHOIS information on August 13, 2018. The Panel agrees that Respondent did not acquire the domain name until August 13, 2018 and finds from Complainant’s uncontested allegations and evidence that Respondent registered and uses the disputed domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <supernanny.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 13, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page