Magicbit, Inc. v. Y. Aioanei Dablanca German
Claim Number: FA1904001838214
Complainant is Magicbit, Inc. (“Complainant”), represented by Dmitri Dubograev, Virginia, USA. Respondent is Y. Aioanei Dablanca German (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <savefrom.biz>, registered with NameCheap, Inc.
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 April 10, 2019; the Forum received payment on April 10, 2019.
On April 10, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <savefrom.biz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 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@savefrom.biz. 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 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 contentions.
Complainant owns and operates a well-known and regarded service provider allowing users to download videos for their personal use. Complainant has rights in the SAVEFROM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,931,103, registered Apr. 5, 2016). See Compl. Ex. A. Respondent’s <savefrom.biz> domain name is identical and confusingly similar to Complainant’s mark as it simply adds the “.biz” generic top-level domain (“gTLD”) to the identical SAVEFROM mark.
Respondent has no rights or legitimate interests in the <savefrom.biz> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the mark for any purpose. 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 domain name to impersonate Complainant and provide competing products/services for commercial gain. See Compl. Exs. B (Complainant’s website) and C (Respondent’s website).
Respondent registered and uses the <savefrom.biz> domain name in bad faith. Respondent’s use of the domain name to commercially benefit off Complainant’s mark by offering competing products disrupts Complainant’s business by trading off the goodwill associated with the SAVEFROM mark. See Compl. Exs. B and C. Further, Respondent had actual and/or constructive knowledge of Complainant’s mark given the longstanding use of the mark prior to Respondent’s registration of the domain name, along with Respondent’s use of the domain name to offer competing products/services.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, it sent an email to the Forum on April 20, 2019 in which it said: “I am not sure what they want to do, Save and From is the letter of meaning, eg save to, save from,....Specifically: Savefrom.net has nothing special that it is matched by two meaningful words, it is not even popular in the place where I live. I also did not find any information about the Savefrom brand on the internet (for example I searched "savefrom.net wikipedia" nor did I have any articles from Wikipedia about them).
Also, if they say that "Just insert a link" is that they think of this sentence and they are copyrighted to this sentence, I am not sure, If they are sure they own the content copyright, Savefrom.net they can confidently appeal to Google DMCA by Google's DMCA-notice tool, If they are correct Google will permanently delete my Website on the search engine, otherwise it is just their personal opinion that everything they think is right?’.
The Panel will give consideration to these submissions in the course of its decision.
1. Complainant is a United States company that owns and operates a well-known and regarded service provider allowing users to download videos for their personal use.
2. Complainant has established its trademark rights in the SAVEFROM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,931,103, registered Apr. 5, 2016).
3. Respondent registered the <savefrom.biz> domain name on October 2, 2018.
4. Respondent uses the domain name to impersonate Complainant and provide competing products/services for commercial gain.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the SAVEFROM mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,931,103, registered Apr. 5, 2016). See Compl. Ex. A. 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).”). Accordingly, the Panel finds that Complainant has established rights in the SAVEFROM mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SAVEFROM mark. Complainant argues that Respondent’s <savefrom.biz> domain name is identical and confusingly similar to Complainant’s mark as it simply adds the “.biz” gTLD to the identical SAVEFROM mark. Similar changes in a registered mark have failed to distinguish sufficiently 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 therefore finds that the <savefrom.biz> domain name is identical to the SAVEFROM mark under Policy ¶ 4(a)(i).
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), 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 out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take the entirety of Complainant’s SAVEFROM trademark and to use it in its domain name;
(b) Respondent registered the <savefrom.biz> domain name on October 2, 2018;
(c) Respondent uses the domain name to impersonate Complainant and provide competing products/services for commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <savefrom.biz> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the mark for any purpose. Under Policy ¶ 4(c)(ii), relevant information includes the WHOIS, 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 identifies “Y. Aioanei Dablanca German” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel finds that Respondent is not commonly known by the <savefrom.biz> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent uses the <savefrom.biz> domain name to impersonate Complainant and provide competing products/services for commercial gain. Using a confusingly similar domain name to compete with a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides a screenshot of the resolving webpage, which displays the title “Youtube Video Downloader” and contains a search panel for users to enter links to allegedly download online videos. See Compl. Ex. C. Complainant also provides a screenshot of its own website for comparison purposes in furtherance of its passing off argument. See Compl. Ex. B. As such, the Panel finds that Respondent’s competing use of the domain name provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
All of these matters go to make out the prima facie case against Respondent.
RESPONDENT’S SUBMISSIONS
Respondent has not filed a Response, but it has made a submission which it is convenient to deal with at this point, as the submission covers this issue and also the issue of bad faith. The Panel has already set out the contents of Respondent’s submission.
There are only two points that Respondent seems to be making which are of relevance. The first is that the domain name consists of two generic words. This may be true, but Complainant has a trademark over the same words when used for the specific purpose described in the registration of the trademark and the domain name is an exact copy of the trademark. The argument therefore can have no effect.
The second point seems to be that Respondent found nothing on the internet about “the Savefrom brand”. That is no defense and a trademark search would have revealed Complainant’s trademark, of which the domain name is a copy.
In any event, the arguments of Respondent can have no effect when it is obvious that Respondent registered the domain name as the exact copy of the trademark and then clearly set about copying Complainant’s business and the writing on its website, even copying the description of Complainant’s product. Respondent was clearly intending to pretend that it was Complainant, interrupt its business, mislead internet users into believing that they had reached Complainant’s website and take business that was intended for Complainant. None of this could give Respondent a right or legitimate interest in the domain name.
Accordingly, the Panel finds that Respondent has not rebutted the prima facie case against it and 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 submits that Respondent’s use of the domain name to benefit commercially off Complainant’s mark by offering competing products disrupts Complainant’s business by trading off the goodwill associated with the SAVEFROM mark. Using a confusingly similar domain name to pass off and/or compete with a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (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 Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As outlined above, Complainant provides a screenshot of the resolving webpage, which displays the title “Youtube Video Downloader” and contains a search panel for users to enter links allegedly to download online videos. See Compl. Ex. C. Complainant also provides a screenshot of its own website for comparison purposes in furtherance of its passing off argument. See Compl. Ex. B. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s SAVEFROM mark at the time of registering the <savefrom.biz> domain name. UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately demonstrate 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 is shown by the longstanding use of the mark prior to Respondent’s registration of the domain name along with Respondent’s use of the domain name to offer competing products/services. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
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 SAVEFROM mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Nothing in Respondent’s submission rebuts any of these conclusions. Indeed, the evidence shows that the Respondent registered and used the domain name in bad faith.
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 <savefrom.biz> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 8, 2019
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