BIG TICKET TELEVISION, INC. v. Ng\u1ecdc Pham
Claim Number: FA1907001851749
Complainant is BIG TICKET TELEVISION, INC. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Ng\u1ecdc Pham (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <judge-judy.org>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2019; the Forum received payment on July 12, 2019.
On July 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <judge-judy.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@judge-judy.org. Also on July 15, 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 August 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a unit of CBS Television Distribution, a division of CBS Studio Inc., which produces “Judge Judy,” an American arbitration-based reality court show, presided over by Judge Judy Sheindlin.
Complainant has rights in the JUDGE JUDY mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”).
Complainant also has rights in the JUDGE JUDY mark through its continuous and widespread use of the mark since the beginning of the show in 1996. Respondent’s <judge-judy.org> domain name is identical to Complainant’s JUDGE JUDY mark as Respondent incorporates the mark in its entirety, while adding a hyphen and a “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <judge-judy.org> domain name. Respondent is not authorize or permitted to use Complainant’s JUDGE JUDY mark nor commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant and divert users to an exact copy of Complainant’s website.
Respondent registered and uses the <judge-judy.org> domain name in bad faith. Respondent attempts to pass off as Complainant through the at-issue domain name’s resolving website, which mimics Complainant’s website. Furthermore, Respondent had actual knowledge of Complainant’s rights in the JUDGE JUDY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the JUDGE JUDY trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the JUDGE JUDY trademark.
Respondent uses the at-issue domain name to impersonate Complainant and divert users to an exact copy of Complainant’s website.
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 at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its JUDGE JUDY trademark. Such trademark registration is sufficient to demonstrate Complainant’s rights in the JUDGE JUDY mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <judge-judy.org> domain name contains Complainant’s JUDGE JUDY trademark with its domain name impermissible space replaced with a hyphen. The domain name concludes with the top-level domain name “.org.” The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from the Complainant’s JUDGE JUDY trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <judge-judy.org> domain name is identical to Complainant’s JUDGE JUDY trademark. See ADESA, Inc. v. James Louis, FA 1736761 (Forum July 19, 2017) (“[T]he Panel finds that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for <judge-judy.org> identifies the domain name’s registrant as “Ng\u1ecdc Pham” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <judge-judy.org> domain name. The Panel therefore concludes that Respondent is not commonly known by the <judge-judy.org> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the <judge-judy.org> domain name to divert internet traffic to a website that is a copy of Complainant’s official website. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and was being used in bad faith. As discussed below, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the <judge-judy.org> domain name to host a website that is a copy of Complainant’s official website. The website is replete with proprietary intellectual property such as the well-known CBS eye logo. Using a confusingly similar domain name in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Finally, Respondent had actual knowledge of Complainant’s rights in the JUDGE JUDY mark when it registered <judge-judy.org> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark. In fact, given the fame and notoriety of Complainant's JUDGE JUDY mark, it is inconceivable that Respondent could have registered the <judge-judy.org> domain name without actual knowledge of Complainant's rights in the JUDGE JUDY trademark. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name independently shows bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <judge-judy.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 7, 2019
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