IMDB.COM, INC. v. Salman Yousuf
Claim Number: FA1904001839189
Complainant is IMDB.COM, INC. ("Complainant"), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Salman Yousuf ("Respondent"), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imdblisted.com>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2019; the Forum received payment on April 17, 2019.
On April 17, 2019, NameCheap, Inc. confirmed by email to the Forum that the <imdblisted.com> 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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@imdblisted.com. Also on April 18, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 operates the website IMDb, launched in 1996, which provides movie, TV, and celebrity content. Complainant states that its website is the #1 movie website in the world, with a combined web and mobile audience of more than 250 million unique monthly visitors. Complainant's site is the 27th most-viewed website in the United States and the 49th most-viewed website globally. Movie and TV cast and crew members are eligible for a free IMDb profile listing that provides biographical data and film credits. The IMDB trademark is registered in the United States and other jurisdictions, both as a standard character mark and in the form of a logo featuring the "IMDb" text in black characters on a gold background. Complainant asserts that its IMDB mark has become well known and famous through its longstanding use, promotion, and commercial success.
Respondent registered the disputed domain name in December 2018. The domain name was registered in the name of WhoisGuard Protected, a privacy registration service; the privacy shield was apparently removed by the registrar in connection with this proceeding. The domain name is being used for a website that displays Complainant's IMDB mark and a close imitation of its logo, with the same black-and-gold color scheme that Complainant uses:
[image omitted]
Respondent's website promotes services related to Complainant's IMDb website, in a manner that Complainant alleges is intended to confuse users into believing that it is associated with Complainant. Complainant further asserts that Respondent responded in the affirmative when asked in an online chat "Is this imdb.com?," confirming this intent. Complainant states that Respondent is not commonly known by Complainant's IMDB trademark; is not affiliated with Complainant, nor an authorized vendor, supplier, or distributor of its goods and services; and is not licensed to use its mark.
Complainant contends on the above grounds that the disputed domain name <imdblisted.com> is confusingly similar to its IMDB mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <imdblisted.com> incorporates Complainant's registered IMDB trademark, adding the generic term "listed" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., IMDB.COM, INC. v. Pham Van Tuyen, FA 1805841 (Forum Oct. 12, 2018) (finding <imdbapi.net> confusingly similar to IMDB); IMDB.COM, INC. v. Sun James, FA 1549966 (Forum Apr. 21, 2014) (finding <javimdb.com> confusingly similar to IMDB); Chex Systems, Inc. v. Mark Heinrich, FA 1578916 (Forum Oct. 8, 2014) (finding <chexlisted.com> confusingly similar to CHEXSYSTEMS). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that displays Complainant's mark to a much greater extent than necessary to describe its services, precluding any claim of nominative fair use. See, e.g., Amazon Technologies, Inc. v. Pablo Espinal, FA 1800983 (Forum Sept. 7, 2018) (finding no fair use based upon gratuitous use of trademarked logo and lack of a clear disclaimer); Xerox Corp. v. All Fath / Software, FA 1791221 (Forum July 19, 2018) ("A respondent acquires rights or legitimate interests by such use only if it needs to use the mark to describe its goods or services, uses no more of the mark than necessary, and does not falsely suggest sponsorship or endorsement by the mark owner.").
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant's registered mark without authorization, and is using it to promote competing services in a manner likely to confuse Internet users into believing that Respondent is associated with Complainant. That alone would suffice to support a finding of bad faith registration and use, even absent Respondent's extraordinary efforts to conceal his identity and location.[i]
Under the circumstances, the Panel concludes that the disputed domain name was registered and is being used in bad faith for purposes of the Policy.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <imdblisted.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 13, 2019
[i] Respondent registered the disputed domain name through a privacy registration service and is using it for a commercial website. The underlying registration data for the domain name include a physical address in Delaware that appears to be that of a registered agent and mail forwarding service, accompanied by a Pakistani telephone number. The "Privacy Policy" on Respondent's website invites users to communicate with Respondent "via email or telephone listed in the contact section," but the "Contact" page contains only an email address, and there does not appear to be any other contact or identifying information on the site. The "About us" page refers to a "team of professionals" without providing any names, and the "Privacy Policy" and "Terms & Conditions" do not even indicate a jurisdiction, let alone a physical address.
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