Fandango, Inc. v. Modern Empire Internet Ltd.
Claim Number: FA 1359315
Complainant is Fandango, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Modern Empire Internet Ltd. (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fanbango.com>, <fandando.com>, <fanddango.com>, and <fantango.com> registered with Fabulous.com Pty Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2010; the National Arbitration Forum received payment on November 18, 2010.
On Nov 18, 2010, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <fanbango.com>, <fandando.com>, <fanddango.com>, and <fantango.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 November 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2010 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@fanbango.com, postmaster@fandando.com, postmaster@ fanddango.com, and postmaster@fantango.com. Also on November 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fanbango.com>, <fandando.com>, <fanddango.com>, and <fantango.com> domain names are confusingly similar to Complainant’s FANDANGO mark.
2. Respondent does not have any rights or legitimate interests in the <fanbango.com>, <fandando.com>, <fanddango.com>, and <fantango.com> domain names.
3. Respondent registered and used the <fanbango.com>, <fandando.com>, <fanddango.com>, and <fantango.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fandango, Inc., provides movie information and at-home and remote ticket sales. Complainant’s FANDANGO trademark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,769,579 filed June 13, 2000; issued September 9, 2003).
Respondent, Modern Empire Internet Ltd., registered the <fantango.com> domain name on January 9, 2002, the <fanddango.com> domain name on January 12, 2005, the <fandando.com> domain name on February 24, 2002, and the <fanbango.com> domain name on January 1, 2003.
Respondent has been a respondent in numerous prior UDRP proceedings in which disputed domain names were transferred from Respondent to the complainant. See The Knot, Inc. v. Modern Empire Internet Ltd., FA 1350446 (Nat. Arb. Forum Nov. 16, 2010); see also Wal-Mart Stores, Inc. v. Modern Empire Internet Ltd., FA 638265 (Nat. Arb. Forum Mar. 16, 2006); see also STMicroelectronics, Inc. v. Modern Empire Internet Ltd., FA 604820 (Nat. Arb. Forum Jan.18, 2006); see also ABC Distributing, Inc. v. Modern Empire Internet, NA 126639 (Nat. Arb. Forum Nov. 13, 2002).
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.
Complainant claims it has established rights in the FANDANGO mark through its registration of the mark with the USPTO (Reg. No. 2,769,579 filed June 13, 2000; issued September 9, 2003). The Panel finds that Complainant’s registration of its FANDANGO mark creates sufficient rights in the mark and that those rights date back to the filing date, June 13, 2000, pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Additionally, the Panel finds that a USPTO registration is adequate to establish Complainant’s rights in the FANDANGO mark, even though Respondent resides or operates outside its jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The Panel also finds that all the disputed domain names are confusingly similar to Complainant’s FANDANGO mark. Respondent has used several common techniques that alter the mark and form a domain name that is confusingly similar. In the <fantango.com> and <fanbango.com> domain names Respondent has merely replace the letter “d” with a “t” or “b.” The <fandando.com> domain name uses a similar approach and replaces the “g” with a “d.” Such replacements fail to distinguish a domain name from a preexisting mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The <fanddango.com> domain name merely adds an additional “d” to the mark. This addition also fails to distinguish the domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)). The addition of the generic-top-level domain “.com” to each of the disputed domain names also fails to distinguish the domain names from the Complainant’s mark. See 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). Therefore, the domain names <fanbango.com>, <fandando.com>, <fanddango.com>, and <fantango.com> are confusingly similar to Complainant’s FANDANGO mark pursuant to Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain names. The burden shifts to Respondent to prove that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because the Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges that Respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names is not any form the domain names. Respondent has not supplied any evidence that indicates it is commonly known by the disputed domain names nor has it replied to the allegations at all. Previous panels have determined that a respondent is not commonly known by a domain name based upon a lack of information in the record and the WHOIS information. See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel finds in this case, just as previous panels have in many others, that this evidence indicates that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent’s use lacks a bona fide offering of goods or services and has no legitimate noncommercial or fair use. Respondent’s domain names resolve to a website that display links to third-parties. Some of these links compete with Complainant’s offerings. The Panel presumes that Respondent generates revenue from this use by either click-through fees or sponsored ads. The redirection of Internet users for profit is an indication that the domain names lack a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant alleges that the disputed domain names are evidence of typosquatting. Internet users who mistakenly misspell Complainant’s mark by adding an additional “d” or accidentally replacing a letter with a similar hard sounding letter are redirected to Respondent’s resolving website. Respondent’s typosquatted versions of Complainant’s mark supply evidence that Respondent lacks rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Complainant alleges Respondent’s use of the disputed domain names is a part of a pattern of bad faith use and registration. Respondent has been a respondent in numerous prior UDRP proceedings in which disputed domain names were transferred from Respondent to the complainant. See The Knot, Inc. v. Modern Empire Internet Ltd., FA 1350446 (Nat. Arb. Forum Nov.16, 2010); see also Wal-Mart Stores, Inc. v. Modern Empire Internet Ltd., FA 638265 (Nat. Arb. Forum Mar. 16, 2006); see also STMicroelectronics, Inc. v. Modern Empire Internet Ltd., FA 604820 (Nat. Arb. Forum Jan. 18, 2006); see also ABC Distributing, Inc. v. Modern Empire Internet, FA 126639 (Nat. Arb. Forum Nov. 13, 2002). The Panel finds this constitutes a pattern of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
The Panel finds that Respondent’s registration and use of the domain name indicate an intent to disrupt Complainant’s business. Respondent registered the disputed domain name with the intent to provide links that compete with Complainant’s preexisting mark. These include links providing movie times and options to purchase tickets online. The registration and use of a confusingly similar domain name to direct users to a Complainant’s competitor is a disruption and an indication of bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under 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 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).”).
The Panel also finds that Respondent is using the confusingly similar domain name to attract Internet users. Respondent registered the domain names in order to cultivate confusion regarding the sponsorship or affiliation of the websites. Respondent hopes to increase the traffic through these domains by cultivating this confusion. This traffic will then generate revenue for Respondent through click through fees or sponsored links. The use of a confusingly similar domain name with the intent to create confusion in order to attract Internet users for financial gain is evidence of bad faith registration and use. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel finds Respondent’s use of the confusingly similar domain names to attract Internet users an indication of bad faith registration and use.
As established above, Complainant has engaged in typosquatting. The Panel finds that typosquatting is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under 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 <fanbango.com>, <fandando.com>, <fanddango.com>, and <fantango.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 20, 2010
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