EL Films LLC v. Nina Chang
Claim Number: FA2308002058321
Complainant is EL Films LLC (“Complainant”), represented by Tiffany Salayer of Procopio, Cory, Hargreaves and Savitch LLP, California, USA. Respondent is Nina Chang (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecareergirl.org> (“Domain Name”), registered with Tucows Domains Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on August 21, 2023; Forum received payment on August 22, 2023.
On August 22, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <thecareergirl.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 August 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2023 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 August 22, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is a non-profit organization providing education and career counselling services. Complainant has rights in the CAREER GIRLS mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,352,906, registered June 18, 2013). Respondent’s <thecareergirl.org> domain name is confusingly similar to Complainant’s CAREER GIRLS mark, as the domain name incorporates almost the entire CAREER GIRLS mark (absent the letter “s”) and adds only the generic term “the” and generic top-level domain (“gTLD”) “.org”.
Respondent lacks rights or legitimate interests in the <thecareergirl.org> domain name since Respondent is not licensed or authorized to use Complainant’s CAREER GIRLS mark and is not commonly known by the Domain Name. Instead, Respondent uses the Domain Name to offer competing services.
Respondent registered and uses the <thecareergirl.org> domain name in bad faith as it seeks to divert users from Complainant to its own website where it offers competing services. Respondent registered <thecareergirl.org> with actual knowledge of Complainant’s rights in the CAREER GIRLS mark.
Respondent failed to submit a Response in this proceeding.
Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the Domain Name, has not established all required elements of its claim, and thus its complaint must be denied.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 has rights in the CAREER GIRLS mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,352,906, registered June 18, 2013). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <thecareergirl.org> Domain Name is confusingly similar to the CAREER GIRLS mark as it consists of almost the entire CAREER GIRLS mark (the absence of the letter “s” being inconsequential), and the generic word “the” and the “.org” gTLD. These changes are insufficient to distinguish the Domain Name from the CAREER GIRLS mark under Policy ¶ 4(a)(i). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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 holds that Complainant has not made out such a prima facie case. Rather, there are factual and legal issues that are unresolved by the evidence presented and the Panel is of the opinion that this case is not one that is well suited for resolution under the Policy. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that “can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery….”).
The Domain Name consists of three generic words being “the”, “career” and “girl” with an entirely descriptive meaning (referring to a woman with a career). While Complainant holds a registered trade mark for the CAREER GIRLS mark it is limited the United States. The Complainant provides considerable evidence of its use of the CAREER GIRLS mark, including, since 2010, the operation of a website at www.careergirls.org where it offers advice and resources for women interested in careers in the United States.
The Domain Name was registered in 2016 and resolves to a website (“Respondent’s Website”) that appears to be operated on a non-profit basis, out of the United Kingdom, which provides examples of women working in the STEM space and resources for women interested in different careers. The “About” page states that “Our mission is to inspire young women with the huge range of roles open to them, and to equip them with specific (and fascinating!) insights into amazing career paths!”
The Respondent, on its face, appears to operate an entirely legitimate non-profit website advising women about careers under the name “The Career Girl”, from the Respondent’s Website. The Respondent’s Website does not either explicitly or (to the best of the Panel’s knowledge) implicitly make any reference to Complainant or otherwise suggest an affiliation. The record does not indicate that Respondent has sought to register any other domain names incorporating the CAREER GIRLS mark or similar marks or engage in any other conduct that suggests the use of the Domain Name is anything other than for a bona fide offering of services.
While the Panel accepts that the Complainant has a significant reputation in the CAREER GIRLS mark, it is apparent that its services are primarily offered in the United States. The Panel is not prepared to conclude that the CAREER GIRLS mark is so well-known and ubiquitous that the Panel must find, for that reason alone, that Respondent’s registration of a domain name containing the words “the”, “career” and “girl” was motivated by awareness of Complainant (which would generally amount to bad faith registration), as opposed to registration of the Domain Name for its inherent meaning; indeed the nature of the Respondent’s Website, being a website offering career advice to women, in a different jurisdiction to that where Complainant trades in, without any obvious evidence of affiliation or misleading conduct, would suggest that Respondent’s motivation related to the inherent meaning of the terms comprising the Domain Name. In summary, it appears that Respondent operates a legitimate non-profit enterprise in the United Kingdom offering career advice to young women and there is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Name and CAREER GIRLS Mark beyond that which arises from a truthful use of the terms “the”, “career” and “girl” to describe the services that Respondent provides.
The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable). If the Complainant wishes to bring proceedings against the Respondent for trade mark infringement, passing off, or question the evidence of the Respondent’s conduct apparent in the Respondent’s Website, such a proceeding is more appropriately brought in a court of competent jurisdiction.
The Panel notes that in the event that further information arises that suggests the motives of the Respondent in registering or using the Domain Name related to the Respondent’s awareness of the Complainant’s CAREER GIRLS mark as opposed to the descriptive meaning of the words comprising the Domain Name there may be grounds to consider a refiled complaint, subject to the applicable criteria.
The Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name.
In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.
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 <thecareergirl.org> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: September 12, 2023
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