Lions Gate Entertainment Inc. v. Stephen Thomas / Cheetah
Claim Number: FA2206002001775
Complainant is Lions Gate Entertainment Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Stephen Thomas / Cheetah (“Respondent”), represented by Paul W. Moncrief of Moncrief & Hart, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lionsgateplus.com>, registered with Google 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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2022; the Forum received payment on June 24, 2022.
On June 27, 2022, Google LLC confirmed by e-mail to the Forum that the <lionsgateplus.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 June 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2022 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@lionsgateplus.com. Also on June 28, 2022, 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.
A timely Response was received and determined to be complete on July 18, 2022.
On July 20, 2022, an Additional Submission was received from Complainant and considered.
On July 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Lions Gate Entertainment Inc., is a producer of film and television. Complainant has rights in the LIONSGATE mark through multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,326,524 registered October 30, 2007). See Compl. Annex E. Respondent’s <lionsgateplus.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the LIONSGATE mark in its entirety and adds the term “plus” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <lionsgateplus.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the LIONSGATE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive webpage. Respondent attempted to exploit Complainant’s offer to purchase the disputed domain name for commercial gain.
Respondent registered and uses the <lionsgateplus.com> domain name in bad faith. Respondent attempts to sell the disputed domain name in excess of out-of-pocket costs. Respondent attempts to use the reputation of the LIONSGATE mark to attract users for commercial gain. The disputed domain name resolves to an inactive webpage.
B. Respondent
Respondent, Stephen Thomas / Cheetah, registered the <lionsgateplus.com> domain name on February 9, 2021. See Compl. Annex A.
Respondent contends that the disputed domain name is not confusingly similar to Complainant’s LIONSGATE mark because the disputed domain name contains the term “plus” and offers distinct services.
Respondent uses the <lionsgateplus.com> domain name for a bona fide offering of goods and services, a religiously-affiliated real estate brokerage. Respondent has made adequate preparations to use the disputed domain name.
Respondent did not register and use the disputed domain name in bad faith. Respondent did not register the disputed domain name for the purpose of selling it. Respondent registered and uses the disputed domain name for the furtherance of its business.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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.
Complainant asserts rights in the LIONSGATE mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 3,326,524 registered October 30 2007). See Compl. Annex E. Registration of a mark with the USPTO is a valid showing of rights in a mark under 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).”). Since Complainant provides evidence of registration of the LIONSGATE mark with the USPTO, Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s <lionsgateplus.com> domain name is identical or confusingly similar to Complainant’s LIONSGATE mark. The addition of a gTLD and a term fails to sufficiently distinguish a disputed domain name from a mark per Policy¶4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Here, the disputed domain name contains the LIONSGATE mark in its entirety while adding in the term “plus” and the“.com”gTLD. Therefore, 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), 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <lionsgateplus.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the LIONSGATE mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy¶4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as “Stephen Thomas / Cheetah”. See Registrar Email Verification.
Complainant contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent offered the disputed domain name for sale and the disputed domain name formerly resolved to an inactive webpage. Where the disputed domain name resolves to an inactive webpage, the Panel finds the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy¶¶4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). In addition, a respondent’s offer to sell a disputed domain name in excess of out-of-pocket costs may be construed as evidence that the respondent lacks rights or legitimate interests in the domain. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Here, Complainant provides evidence that the disputed domain name formerly resolved to an inactive webpage, and now resolves to a page that Complainant contends contains no active hyperlinks. See Compl. Annex G. Complainant also provides evidence that, after a correspondence, Respondent rejected an offer of sale by Complainant, citing the purported value of the domain as a streaming platform. See Compl. Annex H. Complainant further contends that any bona fide use made by Respondent has come only after notice of a dispute. See Compl. Additional Submission. No factual support has been submitted establishing Respondent is commonly known by the disputed domain name per Policy¶4(c)(ii). Therefore, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy¶4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <lionsgateplus.com> domain name in bad faith because Respondent has offered the domain for sale in excess of out-of-pocket costs. An offer of sale of a disputed domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Hard Rock Café International (USA), Inc. v. Gameday Tickets, FA1202001428106 (Forum Mar. 20, 2012) (finding that the respondent’s offer to sell the disputed domain name to the complainant is evidence that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i), regardless of that fact that Complainant made the first offer); see also Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). As previously noted, Complainant provides evidence that, after correspondence during which Complainant made an offer of sale to Respondent, Respondent rejected the offer citing the purported high value of the disputed domain name as a video streaming platform. See Compl. Annex H.
Complainant also contends that Respondent registered and uses the <lionsgateplus.com> domain name in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing website for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). See also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant contends that Respondent attempts to take advantage of the notoriety of Complainant’s mark in order to derive financial benefit.
Complainant argues that, because the disputed domain name previously resolved to an inactive webpage, Respondent has thus demonstrated bad faith registration and use. Inactive holding may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). As previously mentioned, Complainant provides evidence that the disputed domain name previously resolved to an inactive webpage and now resolves to a page containing no active hyperlinks. See Compl. Annex G. The Panel finds the above facts support a finding that Respondent’s registration and use of the disputed domain name is in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lionsgateplus.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: August 5, 2022
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