Jeanine Amapola, Inc. v. Courtney Perkins Ferreira
Claim Number: FA2004001891168
Complainant is Jeanine Amapola, Inc. (“Complainant”), represented by Stephen J. Strauss of BUCHALTER, A PROFESSIONAL CORPORATION, California, USA. Respondent is Courtney Perkins Ferreira (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jeanineamapola.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2020; the Forum received payment on April 6, 2020.
On April 8, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <jeanineamapola.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 April 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2020 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 9, 2020, 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 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, operating under her own name and mark, is a prolific and internationally recognized American YouTube lifestyle and fitness star, social media influencer and actor.
Since 2010, Complainant has used JEANINE AMAPOLA as a trademark and service mark continuously in commerce in connection with the provision of entertainment services, including motion pictures and webisode productions.
In the same timeframe, Complainant’s YouTube Channel has acquired almost 2 million subscribers, and its hosted videos have been viewed more than 95 million times.
Also in the same timeframe, Complainant’s Instagram account has acquired almost 350,000 followers.
As a consequence of its efforts and investments in developing and exploiting the JEANINE AMAPOLA mark, Complainant has established common law rights in the mark.
Respondent registered the domain name <jeanineamapola.com> on or about March 14, 2018.
The domain name is both substantively identical and confusingly similar to Complainant’s JEANINE AMAPOLA mark.
Respondent has not been commonly known by the domain name.
Respondent has no relationship with Complainant that would give permission to register and use the domain name.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent fails to make active use of the domain name.
Respondent previously used the domain name to divert Internet traffic to Respondent’s commercial website.
Respondent offered to sell the domain name to Complainant for a price in excess of Respondent’s out-of-pocket costs to acquire and maintain it.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent’s registration of the domain name usurps Complainant’s rights in the JEANINE AMAPOLA mark and prevents Complainant from controlling use of the mark.
Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JEANINE AMAPOLA mark.
Respondent registered and uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 asserts common law rights in the JEANINE AMAPOLA trademark and service mark. Rights in a mark developed under the common law can suffice to satisfy the standing requirements of Policy¶4(a)(i). See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017):
The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.
In order to establish common law rights in a mark, a UDRP complainant must generally show extensive and continuous use of the mark in commerce and that consumers have come to associate the mark with the complainant as the source of particular goods or services. See, for example, Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum November 29, 2007):
In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.
Complainant’s showing of support for its claim of common law rights in the JEANINE AMAPOLA mark is minimally sufficient to meet the requirements of Policy ¶ 4(a)(i). For this reason, and because Respondent does not contest Complainant’s claim of common law rights in the mark, we conclude that Complainant has standing to pursue its Complaint against Respondent in this proceeding.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <jeanineamapola.com> domain name is substantively identical and confusingly similar to Complainant’s JEANINE AMAPOLA mark. The domain name incorporates the mark in its entirety, merely deleting the space between its terms and adding the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum April 19, 2018):
The mere addition of a gTLD [to the mark of another in creating a domain name] is inconsequential [to a Policy ¶ 4(a)(i) analysis] and does not avoid a finding of identity.
This is because every domain name requires a gTLD or other TLD.
As to Respondent’s deletion of the space between the terms of Complainant’s mark in forming its domain name, this, too, is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <jeanineamapola.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <jeanineamapola.com> domain name, and that Complainant has not authorized Respondent to use the JEANINE AMAPOLA mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Courtney Perkins,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to make any active use the <jeanineamapola.com> domain name. Inactive use of a domain name (called passive holding) for an extended period, as here, constitutes neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018):
The disputed domain name resolves to a parked page with the message, ‘website coming soon!’ The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy¶4(c)(i) &¶4(c)(iii) and Respondent does not have rights or legitimate interests with respect of the domain name.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has held the contested <jeanineamapola.com> domain name for an extended period without making any active use of it. Such passive holding, without more, demonstrates that Respondent has registered and now uses the domain name in bad faith. See, for example, VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the JEANINE AMAPOLA mark when it registered the disputed <jeanineamapola.com> domain name. This further illustrates Respondent’s bad faith in registering it. See for example, Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration of a domain name where a respondent was “well-aware” of a UDRP complainant’s mark at the time of its registration of the domain name).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <jeanineamapola.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 6, 2020
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