Bloody Disgusting, LLC v. BWI Domain Manager c/o Domain Manager
Claim Number: FA0806001208358
Complainant is Bloody Disgusting, LLC (“Complainant”), represented by Jeffrey
R. Cohen, of Millen, White, Zelano & Branigan, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bloodydisgusting.com>, registered with Rebel.com Corp.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 17, 2008, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <bloodydisgusting.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 15, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bloodydisgusting.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <bloodydisgusting.com> domain name is confusingly similar to Complainant’s BLOODY-DISGUSTING mark.
2. Respondent does not have any rights or legitimate interests in the <bloodydisgusting.com> domain name.
3. Respondent registered and used the <bloodydisgusting.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant and its predecessor-in-interest have been using the BLOODY-DISGUSTING mark in commerce in connection with the providing of information in the horror genre over the Internet. Complainant and its predecessor-in-interest have owned and operated the <bloody-disgusting.com> domain name since late 2001, with its first website functioning on March 5, 2002. Complainant has expended roughly US $30,000 in its operations of the <bloody-disgusting.com> domain name. Additionally, Complainant has filed for a trademark application for the BLOODY-DISGUSTING mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 77/385,789 filed Jan. 31, 2008).
Respondent’s <bloodydisgusting.com> domain name was registered on March 23, 2003. It currently resolves to website featuring various links to third-parties under headings with a subject matter relating to various topics under the horror genre. Some of these third-parties offer competing goods and services to those offered by Complainant.
Respondent has also been the subject of several previous UDRP proceedings in which the then-disputed domain name was transferred from Respondent to the respective complainants in those cases. See, e.g., AMFM, Inc. v. BWI Domain Manager, FA 1084750 (Nat. Arb. Forum Nov. 20, 2007); see also AARP v. BWI Domain Manager, FA 1094042 (Nat. Arb. Forum Nov. 26, 2007); see also American Girl, LLC v. BWI Domain Manager, FA 1104431 (Nat. Arb. Forum Dec. 14, 2007).
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel recognizes that it is not necessary for
Complainant to have registered the BLOODY-DISGUSTING mark with a governmental
authority in order to establish rights in the mark pursuant to Policy ¶
4(a)(i), so long as it can demonstrate common law rights through continuous use
and secondary meaning. See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the complainant need not own a valid trademark
registration for the ZEE CINEMA mark in order to demonstrate its rights in the
mark under Policy ¶ 4(a)(i)); see also
Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the
Policy does not require that a complainant’s trademark be registered by a
government authority or agency in order for the complainant to establish rights
in the mark).
Complainant registered the <bloody-disgusting.com>
domain name in late 2001. It has been
offering information and news in “horror” genre from this website and under the
BLOODY-DISGUSTING mark ever since. Complainant
contends that it has spent over US $30,000 in maintaining and operating its
services at the <bloody-disgusting.com> domain name and likewise filed a
trademark application for the BLOODY-DISGUSTING mark on January 21, 2008 with
the USPTO. Previous panels have
demonstrated that common law rights are determined on an individual basis under
the circumstances of each case and that there is no formal threshold on the
amount of evidence that is required to establish such rights. See,
e.g., Goepfert v.
The <bloodydisgusting.com> domain name would be identical to Complainant’s BLOODY-DISGUSTING mark but for the omission of the hyphen. However, the omission of punctuation such as hyphens does not distinguish a disputed domain name. Furthermore, the inclusion of the generic top-level domain (“gTLD”) “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. As a consequence, the Panel finds that the <bloodydisgusting.com> domain name is confusingly similar to Complainant’s BLOODY-DISGUSTING mark pursuant to Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Before the burden shifts to Respondent to prove that it does have rights and legitimate interests in the disputed domain name, Complainant is required under Policy ¶ 4(a)(ii) to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”). Having, found that Complainant met this threshold, it is incumbent upon Respondent to demonstrate any rights or legitimate interests it may have in the disputed domain name. See also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
No
response has been received to the Complaint.
Therefore, the Panel may presume that Respondent lacks all rights and
legitimate interests in the <bloodydisgusting.com> domain
name, but will still examine the record in consideration of the elements under
Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence).
Respondent’s WHOIS
information for the disputed domain name lists Respondent as “BWI Domain
Manager c/o Domain Manager.” Respondent
has provided no additional evidence, nor does any exist in the record, to
demonstrate that Respondent is or ever was commonly known by the disputed
domain name. With only the information
in the record, the Panel finds that Respondent is not commonly known by the <bloodydisgusting.com>
domain name pursuant to Policy
¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see
also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. 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).
Complainant contends that the disputed domain name resolves
to a links page, where numerous links to a range of third-parties exist,
labeled under topics similar to the same “horror” genre in which Complainant
operates. Most of these links are to
third-parties that offer services and goods in direct competition with those
offered under Complainant’s BLOODY-DISGUSTING mark. Absent any further explanation from
Respondent, the Panel may presume that Respondent lacks rights and legitimate
interests in the <bloodydisgusting.com> domain name, because such
a competitive use is on its surface neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Constellation Wines
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
Respondent has been the subject of several previous UDRP
proceedings in which the then-disputed domain name was transferred from
Respondent to the respective complainants in those cases. See,
e.g., AMFM, Inc. v. BWI Domain Manager, FA 1084750 (Nat. Arb. Forum Nov.
20, 2007); see also AARP v. BWI Domain
Manager, FA 1094042 (Nat. Arb. Forum Nov. 26, 2007); see also American Girl, LLC v. BWI Domain Manager, FA 1104431 (Nat.
Arb. Forum Dec. 14, 2007). The Panel
considers this to be highly suspicious in consideration of this case, because
of the <bloodydisgusting.com> domain name is confusingly similar
to Complainant’s BLOODY-DISGUSTING mark.
Without any contradiction from Respondent, the Panel finds that the
close similarities between Complainant’s mark and the disputed domain name, in
consideration of the previous negative UDRP determinations against Respondent,
demonstrate that Respondent has registered and is using the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(ii) as part of a pattern of
registering infringing domain names. See Westcoast
Contempo Fashions Ltd. v.
Complainant has already demonstrated that the disputed domain name resolves to a links page, displaying a variety of links to third-parties, many of whom who offer the same products and services as those offered under Complainant’s BLOODY-DISGUSTING mark. The Panel finds this to be a highly disruptive use of the disputed domain name and likewise presumes Respondent’s purpose of such use was to disrupt Complainant’s business. The Panel finds that such use violates Policy ¶ 4(b)(iii). Accordingly, the Panel determines this to suffice as evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
And finally, Complainant argues that it may be presumed that
Respondent is commercially benefiting from such competing use of a confusingly
similar disputed domain name. The Panel
agrees and presumes that since Respondent’s <bloodydisgusting.com>
domain name redirects Internet users to a variety of competing third-parties,
Respondent is financially benefiting from such use through either
“click-through” fees or some other referral fee scheme. As a result, the Panel finds this to be
evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that
the respondent’s use of the <arizonashuttle.net> domain name, which
contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic
to Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also Univ.
of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”); see
also Asbury Auto. Group, Inc.
v.
The Panel concludes that Complainant has sufficiently established 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 <bloodydisgusting.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 4, 2008
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