Wahid Faiez “J.D.” Farag v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2104001941318
Complainant is Wahid Faiez “J.D.” Farag (“Complainant”), represented by Jason Paul Blair of Fleckman & McGlynn, PLLC, Texas, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jdfarag.com>, registered with Media Elite Holdings Limited.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2021; the Forum received payment on April 13, 2021.
On April 15, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <jdfarag.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2021 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@jdfarag.com. Also on April 16, 2021, 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 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Since at least as early as 2004, Complainant has been the lead pastor of Calvary Chapel Kaneohe, a non-denominational Christian church on the island of Oahu in the US state of Hawaii. Complainant has common law trademark rights in the trademark J.D. FARAG as it is Complainant’s publicly-known nickname and Complainant has used the mark in connection with Complainant’s religious services and Biblical prophecy through substantially exclusive and continuous use since 2004. Respondent’s <jdfarag.com> domain name, registered on May 8, 2020, is confusingly similar to Complainant’s J.D. FARAG mark as it contains the entirety of such mark.
Respondent lacks rights or legitimate interests in the <jdfarag.com> domain name. Respondent has not been commonly known by the Domain Name, and Complainant has not licensed or otherwise authorized Respondent to use J.D. Farag as a name or mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with a malware scheme.
Respondent registered and uses the <jdfarag.com> domain name in bad faith. Respondent registered a confusingly similar domain name to confuse Complainant’s followers and disrupt its business. Respondent also uses the disputed domain name as part of a malware scheme. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the J.D. FARAG because Complainant is widely known.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 and evidence 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 and supported 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”).
Complainant asserts common law trademark rights in the J.D. FARAG mark because the mark is Complainant’s nickname and Complainant uses the mark in connection with Complainant’s religious teachings. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Snap Inc. v. Domain Administrator / Domain Professionals, LLC / Domain Master / Global Personals, LLC / Domain Master / Worldwide Connect Partners, LLC, FA 1933412 (Forum May 11, 2021) (“However, the UDRP does not discriminate between registered and unregistered trademarks and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights in an unregistered trademark as to deserve legal protection, based solely on its use in commerce.”) Additionally, secondary meaning can be evidenced through a complainant’s commercial use of the mark. 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.) Here, Complainant argues that beginning in March of 2008, Complainant began regular video uploads to YouTube under the name “J.D. Farag,” and hosted its own <jdfarag.org> website, all discussing issues of Biblical prophecy and Christian Evangelism. Complainant’s YouTube channel currently has approximately 256,000 subscribers, and his videos, of which over 2,000 have been posted, routinely enjoy well over 100,000 views each. Moreover, Complainant maintains a considerable presence on social media, with his Instagram page enjoying approximately 23,500 followers, his Facebook page enjoying approximately 58,000 followers, and his Twitter page enjoying approximately 31,100 followers. Complainant’s substantial and continuous use of his name in connection with his services for over 13 years provides a sufficient basis for the Panel to find that Complainant has demonstrated rights in the J.D. FARAG mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <jdfarag.com> domain name is confusingly similar to Complainant’s J.D. FARAG mark as it contains the mark in its entirety. Removing punctuation while adding a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Memoirs, Inc. v. Patel, FA 98244 (Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <jdfarag.com> domain name as Respondent has not been commonly known by the Domain Name, and Complainant has not licensed or otherwise authorized Respondent to use J.D. Farag as a name or mark. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name, as provided to the Forum by the concerned Registrar, lists the registrant as “Domain Administrator,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the J.D. FARAG mark. Respondent has not filed a Response or made any other submission in this case to shed any light on this issue. Therefore, the Panel finds nothing to suggest that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <jdfarag.com> domain name in connection with a bona fide offering of goods or services or that is makes a legitimate noncommercial or fair use thereof as Respondent uses it in a malware scheme. Using a disputed domain name to distribute malware 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 Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using 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 under Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot showing that the disputed domain name automatically forwards to a website that prompts the user with a message saying “[b]y clicking the button, you’ll go through a standard security check, after which you will be redirected Chrome store and will be given the option to install Secured Search extension. This extension will offer you a safer web search experience by changing your default search provider.” Complainant claims that this appears to be an attempt at installing malware or spyware on the user’s computer. Further, while the Panel notes that the word “Farag” is used as a surname, there is no evidence in this case that Respondent is using it as such and the use of the letters “jd” before the name lend further credence to the conclusion that it is not being used for any descriptive or fair purpose.
The Panel finds that Complainant has made a prima facie case which has gone unrebutted by the Respondent’s failure to participate in these proceedings. Therefore, by a preponderance of the evidence, the Panel concludes that Respondent fails to demonstrate that it makes a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered the <jdfarag.com> domain name with actual knowledge of Complainant’s rights in the well-known J.D. FARAG mark based on Complainant’s longstanding use and his extensive social media presence. The notoriety of a mark can create a presumption of actual knowledge of a complainant’s rights to a mark and support a finding of bad faith. See Groupe Adeo v. Ettori Mathieu, D2021-0632 (Forum May 5, 2021) (“Respondent could not have been unaware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given the strong reputation of the Complainant and the fact that the disputed domain name fully and exactly reproduces the LEROY MERLIN trademark.”) Here, Complainant argues that Complainant is widely known, especially in the field of Biblical prophecy, through Complainant’s social media presence and his own <jdfarag.org> website. In support, he has submitted copies of his website and social media pages. Respondent has not contested Complainant’s claim and the Panel also notes the very near identity of the <jdfarag.com> domain name to Complainant’s own <jdfarag.org> website address. Based upon the available evidence, the Panel finds it more likely than not that Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s trademark.
Next, Complainant contends that Respondent registered and uses the <jdfarag.com> domain name in bad faith as Respondent registered a confusingly similar domain name to disrupt Complainant’s business and to seek commercial gain based on confusion with its mark. Registering and using a confusingly similar domain name for such purposes can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant argues that the disputed domain name, which is likely to be confused with Complainant’s widely known nickname, disrupts Complainant’s business because his followers who do in fact download malware may lose faith and trust in Complainant thus causing them to turn away from his services. Respondent also appears to be seeking commercial gain from the confusingly similar <jdfarag.com> domain name as it may be receiving payments from the third-party site to which it forwards traffic. Respondent has not participated in this case and so it does not dispute Complainant’s contentions or otherwise seek to explain its actions.
Complainant also points out that Respondent registered and uses the <jdfarag.com> domain name in bad faith as Respondent uses the domain name as part of a malware scheme. Using a disputed domain name to distribute malware demonstrates bad faith per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). Here, Complainant provides a screenshot showing that the disputed domain name forwards the user to a website that prompts the user to install “Secured Search extension” software that appears to be malware or spyware.
In view of the above, and by a preponderance of the evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jdfarag.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 13, 2021
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