Earl G. Graves Ltd / Earl G. Graves Publishing Company, Inc. v. Mike Mason
Claim Number: FA1903001833902
Complainant is Earl G. Graves Ltd / Earl G. Graves Publishing Company, Inc. (“Complainant”), represented by Meichelle R. MacGregor of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Mike Mason (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theblackenterprise.com> (“Domain Name”), registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2019; the Forum received payment on March 13, 2019.
On March 15, 2019, Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <theblackenterprise.com> domain name is registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA 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 March 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 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@theblackenterprise.com. Also on March 20, 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 April 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 provides services in the media, publishing and entertainment fields, including print and digital publications, multimedia content, television broadcasts and business and finance events. Complainant has rights in the BLACK ENTERPRISE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,032,295, registered Feb. 3, 1976). Respondent’s <theblackenterprise.com> domain name is identical or confusingly similar to Complainant’s mark as it simply adds the word “the” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <theblackenterprise.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the Domain Name to offer services in direct competition to those offered by Complainant.
Respondent registered and uses the <theblackenterprise.com> domain name in bad faith. Respondent disrupts Complainant’s business by intentionally trying to deceive consumers into believing that they are receiving services from Complainant or otherwise trying to usurp and trade on Complainant’s goodwill and well-established reputation in Complainant’s BLACK ENTERPRISE mark for its own financial benefit. Respondent creates this confusion to offer competing services. Further, there is no doubt that Respondent had actual and constructive knowledge of Complainant’s mark when it registered the Domain Name given the worldwide fame and notoriety associated with the mark and Respondent’s intentional inclusion of the exact mark in the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BLACK ENTERPRISE mark. The Domain Name is confusingly similar to Complainant’s BLACK ENTERPRISE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used of the Domain Name 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:
(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).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel has reviewed the Complaint and is satisfied that that Earl G. Graves Publishing Company, Inc. is a wholly owned subsidiary of Earl G. Graves Ltd. and the authorized user of the BLACK ENTERPRISE mark registered to Earl G. Graves Ltd. This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
Complainant has rights in the BLACK ENTERPRISE mark based upon registration of the mark with the USPTO ((e.g. Reg. No. 1,032,295, registered Feb. 3, 1976). 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 <theblackenterprise.com> Domain Name is confusingly similar to the BLACK ENTERPRISE mark as it consists of the BLACK ENTERPRISE mark, the descriptive word “the” and the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the BLACK ENTERPRISE mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also 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 made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BLACK ENTERPRISE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Mike Mason” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website (“Respondent’s Website”) that purports to offer services that directly compete with Complainant’s services and is supported by pay-per-click advertising; that is, Respondent’s Website purports to be a media website with stories targeted at the African-American community. In circumstances where the services have at best a limited connection to any descriptive meaning inherent in the Domain Name, the use of a domain name to compete with a complainant is not a bona fide offering under the Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time the Respondent registered the Domain Name, May 25, 2017, Respondent had actual knowledge of Complainant’s BLACK ENTERPRISE mark. There is no obvious explanation, nor has one been provided, for an entity to acquire a domain name that exactly reproduces the BLACK ENTERPRISE Mark and redirect it to a site that offers services in direct competition with Complainant other than to take advantage of Complainant’s reputation in the BLACK ENTERPRISE Mark. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s BLACK ENTERPRISE Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that offers competing services and features pay-per-click links. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (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)(iii)”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theblackenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 12, 2019
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