Justin.tv, Inc. v. heshan
Claim Number: FA1112001418422
Complainant is Justin.tv, Inc. (“Complainant”), represented by Hillary Schroeder of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is heshan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twich.tv>, registered with Dynadot, LLC.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2011; the National Arbitration Forum received payment on December 6, 2011.
On December 5, 2011, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <twich.tv> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 December 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@twich.tv. Also on December 6, 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 January 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <twich.tv> domain name is confusingly similar to Complainant’s TWITCHTV mark.
2. Respondent does not have any rights or legitimate interests in the <twich.tv> domain name.
3. Respondent registered and used the <twich.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Justin.tv, Inc., provides services enabling users to create live video and to broadcast it in numerous countries while chatting in real-time with other viewers. Complainant claims common law rights in the TWITCHTV mark based on the June 2011 launch of its TWITCHTV-branded website and services.
Respondent, heshan, registered the disputed domain name on July 26, 2001. The disputed domain name resolves to a copycat website which is visually similar to Complainant’s TWITCHTV-branded site. Respondent’s site copies all streaming content available on Complainant’s official site, and prominently displays the TWITCHTV mark. Respondent’s website also asks visitors to divulge personal information to access the site’s content.
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 does not hold a trademark registration for the TWITCHTV mark. A complainant is not required to register a mark in order to develop rights in it under Policy ¶ 4(a)(i), however. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
In order to establish rights in a mark without registration with a trademark authority, a complainant must demonstrate that it has acquired common law rights in the mark, such that the mark has attained secondary meaning. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Complainant in the instant case has provided evidence of its use of the TWITCHTV mark in commerce as early as June 2011, a full month before Respondent’s registration of the disputed domain name. Complainant has also presented evidence of the popularity of its own TWITCHTV-branded website, which passed 8 million unique visitors in July 2011. The Panel finds Complainant’s evidence to constitute a sufficient showing of secondary meaning to confer common law rights in the TWITCHTV mark under Policy ¶ 4(a)(i). See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant urges that the Panel find the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The disputed domain name, which includes the generic top-level domain (“gTLD”) “.tv,” omits the second “t” from Complainant’s TWITCHTV mark, while adding a period to create the gTLD. Past panels have determined that the misspelling of a complainant’s mark by a single letter is not enough to distinguish a mark under Policy ¶ 4(a)(i).
See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter). Because neither punctuation or gTLDs are relevant to confusing similarity comparisons under Policy ¶ 4(a)(i), Respondent’s addition of a period to Complainant’s mark in order to create the “.tv” gTLD does not distinguish the disputed domain name. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel holds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) to be satisfied.
Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. 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)). In the immediate case, Complainant has satisfied its burden, while Respondent has not. Some panels have viewed this as per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). For the sake of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
In alleging that Respondent is not commonly known by the disputed domain name, Complainant states that it has never authorized, licensed, contracted, or otherwise permitted Respondent’s use of the TWITCHTV mark. The relevant WHOIS information identifies the domain name registrant as “heshan,” which the Panel finds to bear no resemblance to the <twich.tv> domain name. Because Respondent has failed to submit a Response, there is no other evidence in the record to support the idea that Respondent is commonly known by the disputed domain name. Based on the foregoing, the Panel must conclude that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).
Respondent’s use of the disputed domain name does not coincide with 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). Respondent uses the disputed domain name in connection with a phishing scam, whereby victims are tricked into divulging personal information in order to access the content on Respondent’s site. Because Respondent’s site is housed at a confusingly similar domain name and is visually similar to Complainant’s site, visitors are likely to believe that they are providing their personal information to Complainant, not Respondent. Previous panels have agreed that such schemes cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel concludes that Respondent’s use of the disputed domain name does not coincide with 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).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Even apart from Complainant’s attraction for commercial gain argument, past panels have found bad faith registration and use based on the mere presence of a phishing operation. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Respondent’s actions in the immediate case undoubtedly constitute phishing. Consistent with past UDRP precedent, the Panel also finds bad faith registration and use under Policy ¶ 4(a)(iii) on this basis alone. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the TWITCHTV mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twich.tv> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 16, 2012
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