Tropical MBC, LLC v. PrivacyProtect.org / Domain Admin
Claim Number: FA1104001384934
Complainant is Tropical MBC, LLC (“Complainant”), represented by Melissa D. Doogan of Volpe and Koenig PC, Pennsylvania, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cilps4sale.com>, registered with Web Werks India Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2011; the National Arbitration Forum received payment on April 20, 2011.
On April 22, 2011, Web Werks India Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <cilps4sale.com> domain name is registered with Web Werks India Pvt. Ltd. and that Respondent is the current registrant of the name. Web Werks India Pvt. Ltd. has verified that Respondent is bound by the Web Werks India Pvt. 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 April 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2011 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@cilps4sale.com. Also on April 26, 2011, 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 May 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cilps4sale.com> domain name is confusingly similar to Complainant’s CLIPS4SALE mark.
2. Respondent does not have any rights or legitimate interests in the <cilps4sale.com> domain name.
3. Respondent registered and used the <cilps4sale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tropical MBC, LLC, conducts an adult-oriented business over the Internet. Complainant operates its business under the CLIPS4SALE mark which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,554,200 filed January 30, 2006; registered December 30, 2008).
Respondent registered the <cilps4sale.com> domain name on January 19, 2006. The disputed domain name resolves to a website that displays hyperlinks to websites that compete with Complainant’s adult-oriented media business.
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 asserts rights in the CLIPS4SALE mark based on its registration of the mark with the USPTO (Reg. No. 3,554,200 filed January 30, 2006; issued December 30, 2008). The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i), dating back to January 30, 2006, because registration of a mark with a federal trademark authority, such as the USPTO, establishes rights in a mark under the Policy. 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 Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant contends that it has common law rights in the CLIPS4SALE mark. Complainant uses the mark to provide adult-oriented material on its website. Furthermore, Complainant has consistently used the mark in connection with its adult-oriented <clips4sale.com> domain name which was registered on July 21, 2003. The trademark registration for the CLIPS4SALE mark also includes July 21, 2003, as the date the mark was first used in commerce. The Panel finds that these facts establish common law rights in the mark dating back to Complainant’s first use of the mark in commerce 2003. See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant alleges that the <cilps4sale.com> domain name is confusingly similar to the CLIPS4SALE mark. In creating the disputed domain name, Respondent incorporated the majority of Complainant’s mark and merely transposed the second and third letters of the mark. Furthermore, Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant's mark. The Panel finds that these actions have not resulted in a unique domain name and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); 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 finds that Policy ¶ 4(a)(i) has been established.
Policy ¶ 4(a)(ii) requires that Complainant must make a prima facie showing in support of its allegation that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has satisfied this requirement, the burden shifts to Respondent in order to prove it has rights or legitimate interests in the domain name. The Panel finds that Complainant has met its burden of making a prima facie showing, and because Respondent failed to respond to these proceedings, the Panel presumes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will proceed to analyze the record under Policy ¶ 4(c) to see if Respondent does have any rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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.”).
Complainant contends that Respondent is not commonly known by the disputed domain name and that Respondent has not received authorization to use the CLIPS4SALE mark. The Panel, having considered all of the evidence in the record, can find no evidence that would support a finding that Respondent is commonly known by the disputed domain name. Furthermore, the WHOIS information does not put forth any information that would support a finding that Respondent is commonly known by the disputed domain name. Due to the lack of evidence in favor of Respondent, the Panel finds that Respondent is not commonly known by the <cilps4sale.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that the disputed domain name resolves to a website featuring hyperlinks to competitors in the adult-oriented media business. The Panel finds that Respondent’s use of the disputed domain name, in order to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s <cilps4sale.com> domain name resolves to a website featuring hyperlinks to websites that compete with Complainant’s adult-oriented business. Respondent’s domain name registrations seeks to profit from Internet users’ recognition of Complainant’s mark, while the disputed domain name also disrupts Complainant’s business. Therefore, the Panel supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”).
The Panel presumes that Respondent receives click-through fees from the hyperlinks posted on the website resolving from the disputed domain name. Internet users searching for Complainant’s adult-oriented website may find Respondent’s website and will end up using the hyperlinks to find Complainant. Complainant also alleges that Internet users will be confused as to Complainant’s sponsorship of, and affiliation with the disputed domain name, resolving website and posted hyperlinks. Based on this evidence, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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).”)
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cilps4sale.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 26, 2011
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