Jeffrey Henson Scales v. Fangkie S
Claim Number: FA1910001866011
Complainant is Jeffrey Henson Scales (“Complainant”), represented by David D. Lin of Lewis & Lin LLC, New York, USA. Respondent is Fangkie S (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jeffreyscales.com> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2019; the Forum received payment on October 9, 2019.
On October 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jeffreyscales.com> 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 October 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@jeffreyscales.com. Also on October 14, 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 November 5, 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 is a well-known photographer, author, editor, illustrator, and adjunct professor since the 1960s. Complainant has common law rights in the JEFFREY SCALES mark as it is his personal name that has been used in commerce. Respondent’s <jeffreyscales.com> domain name is confusingly similar to Complainant’s JEFFREY SCALES mark as it incorporates the mark in its entirety along with a “.com” generic top-level domain (“gTLD”). Indeed Complainant registered the Domain Name in 2008 and used it as its personal website before inadvertently allowing the registration of the Domain Name to lapse in 2017-18, when it was acquired by Respondent.
Respondent has no rights or legitimate interests in the <jeffreyscales.com> domain name. Respondent is not authorized to use Complainant’s JEFFREY SCALES mark and is not commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the website at the Domain Name (“Respondent’s Website”) to pass off as Complainant, including offering photography services, reproducing material from Complainant’s personal website as existed at the Domain Name prior to Complainant losing control and displaying the work of third-party photographers.
Respondent registered and uses the <jeffreyscales.com> domain name in bad faith. Respondent took possession of the Domain Name after Complainant had used it as a website for approximately nine years and uses it to attract, for commercial gain, users to the Respondent’s Website where it passes off as Complainant. Furthermore, Respondent had knowledge of Complainant’s rights in the JEFFREY SCALES mark prior to registering the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the JEFFREY SCALES mark. The Domain Name is confusingly similar to Complainant’s JEFFREY SCALES 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 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 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”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the JEFFREY SCALES mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. The Panel notes that common law rights are not generally afforded to a mark that is a personal name for this reason alone. See Newman and Denney P.C. v David Schorr, FA 1631045 (Forum Dec. 28, 2015) (finding that “[t]he mere use of personal names by parties to reference themselves or their business is not proof of secondary meaning,” and therefore is not dispositive evidence of a complainant’s rights in a mark). However, common law rights may be found where a complainant has provided sufficient evidence to support that the mark has acquired secondary meaning. See John G. Balestriere v. Simon Mills / Emancipation Media, FA 1618353 (Forum June 11, 2015) (finding Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, and Complainant showed secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services by providing evidence of use in the legal services business and attorney advertising dating back to Jan. 1, 2005.).
Complainant has offered photography and related services under the JEFFREY SCALES mark since the 1960s. Complainant’s work, using the JEFFREY SCALES mark, has appeared in numerous museum exhibits, photography magazines and album covers. Complainant has authored and published books on his photography. Complainant is also a photography editor at the New York Times and an adjunct professor at the Tisch School of Arts at New York University. The Panel is satisfied from Complainant’s evidence (including evidence of the length of use, reputation and third party recognition in the photography industry) that Complainant’s use of the JEFFREY SCALES mark for his photography services is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the JEFFREY SCALES mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <jeffreyscales.com> domain name is identical to Complainant’s JEFFREY SCALES mark as it fully incorporates the JEFFREY SCALES mark, removes the spaces between the words and adds the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the JEFFREY SCALES mark under Policy ¶ 4(a)(i). See NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum Mar. 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”).; 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 the 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 JEFFREY SCALES 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 “Fangkie S” 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 is presently inactive but Complainant alleges, and provides evidence supporting its allegations, that prior to the commencement of the proceeding Respondent used the Domain Name for the Respondent’s Website. Respondent, through the Respondent’s Website, offered photography services under the JEFFREY SCALES Mark, included material from Complainant’s former website including material that suggested Respondent was Complainant (such as material that referred to “my wife Meg”, Meg being the name of Complainant’s wife) and also reproduced copyrighted material from third parties. This is a clear attempt to use the Domain Name to pass off as Complainant. Use of a disputed domain name to pass off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
It is unclear to the Panel when Respondent took possession of the Domain Name from Complainant, however in the absence of contradictory evidence; such a step likely took place in 2017 or 2018. The Panel finds that, at that time Respondent had actual knowledge of Complainant’s JEFFREY SCALES mark. The Respondent uses the Domain Name to pass itself off as Complainant including by reproducing material from Complainant’s former website and referring to Complainant’s family as its own. 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 as Respondent has used the Respondent’s Website associated with the Domain Name to attempt to pass itself off as the Complainant, offering competing photography services, either to disrupt the Complainant’s business or for financial gain. Using a disputed domain name to pass off as the Complainant for commercial gain can demonstrate bad faith under Policy ¶¶ 4(b) (iii) and (iv). See 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”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b) (iii) and (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 <jeffreyscales.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 7, 2019
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