Fandango, LLC v. Milan Kovac
Claim Number: FA1204001439414
Complainant is Fandango, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fsndango.com> and <afandango.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 13, 2012. The Complaint was submitted in both Slovak and English.
On April 17, 2012, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <fsndango.com> and <afandango.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com 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 23, 2012, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of May 14, 2012 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@fsndango.com and postmaster@afandango.com. Also on April 23, 2012, the Slovak language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <fsndango.com> and <afandango.com> domain names is confusingly similar to Complainant’s FANDANGO mark.
2. Respondent does not have any rights or legitimate interests in the <fsndango.com> and <afandango.com> domain names.
3. Respondent registered or used the <fsndango.com> and <afandango.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant began using its FANDANGO mark in 2000 in connection with movie information and at-home/remote ticket sales.
2. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its FANDANGO mark (e.g., Reg. No. 2,769,579 registered September 30, 2003).
3. Respondent registered the <fsndango.com> and <afandango.com> domain names no earlier than May 4, 2008.
4. Respondent’s disputed domain names are confusingly similar to Complainant’s FANDANGO mark.
5. Respondent is not commonly known by the <fsndango.com> and <afandango.com> domain names.
6. With the <afandango.com> domain name, Respondent redirects Internet users to a website that features generic hyperlinks to third-party websites, some of which directly compete with Complainant’s business.
7. Respondent receives pay-per-click fees from the hyperlinks.
8. The <fsndango.com> domain name resolves to a website that attempts to phish for personal information by informing Internet users that they won a prize and then requiring Internet users to submit personal information in order to receive the prize.
9. Respondent registered and uses the <fsndango.com> and <afandango.com> domain names to commercially benefit by taking advantage of Complainant’s well known mark, which is evidence of bad faith.
10. Respondent registered and uses the <fsndango.com> domain name to phish for personal information, which is evidence of bad faith.
11. Respondent’s typosquatting is evidence of bad faith registration and use.
12. Respondent has been a respondent in previous UDRP proceedings in which the panels ordered the transfer of the disputed domain names to the respective complainants. See Google Inc. v. Kovac, FA 1402160 (Nat. Arb. Forum Sept. 15, 2011); see also Wells Fargo & Co. v. Kovac, FA 1417502 (Nat. Arb. Forum Jan. 12, 2012); see also United Servs. Auto. Assoc. v. Kovac, FA 1388167 (Nat. Arb. Forum June 29, 2010).
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.
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.”).
Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
In order to demonstrate its rights in the FANDANGO mark, Complainant provides the Panel with evidence of its trademark registrations with the USPTO (e.g., Reg. No. 2,769,579 registered September 30, 2003). The Panel notes that Respondent does not reside or operate in the United States. However, the Panel determines that Complainant’s demonstration of its trademark registrations with the USPTO are sufficient to establish Complainant’s rights in its FANDANGO mark 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <fsndango.com> and <afandango.com> domain names are confusingly similar to Complainant’s FANDANGO mark. Complainant claims that the disputed domain names differ from Complainant’s mark by one letter. The Panel notes that the <fsndango.com> domain name contains the letter “s” instead of the letter “a” and that the <afandango.com> domain name features the addition of the letter “a.” Complainant argues that the Panel may ignore the addition of the generic top-level domain (“gTLD”) “.com” because “the relevant comparison to be made is between only the second-level portion of the” <fsndango.com> and <afandango.com> domain names. The Panel agrees with Complainant regarding the “.com” portion of the disputed domain names and finds that the addition and exchange of letters fails to adequately distinguish the disputed domain names from Complainant’s 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”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); 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 makes these findings, and concludes that Respondent’s <fsndango.com> and <afandango.com> domain names are confusingly similar to Complainant’s FANDANGO mark under 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes that Respondent did not respond to this case and, therefore, did not present any evidence that it is commonly known by the disputed domain names. Complainant, on the other hand, claims that Respondent is not commonly known by the <fsndango.com> and <afandango.com> domain names. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant and that it has not “licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s . . . mark.” Complainant contends that the WHOIS information, which lists “Milan Kovac” as the registrant of the disputed domain names, “’suggests Respondent is known as’ an entity other than the trademark associated with Complainant.” Based on this evidence, the Panel finds that Respondent is not commonly known by the <fsndango.com> and <afandango.com> domain names for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant argues that Respondent uses the <afandango.com> domain name to redirect Internet users to a website featuring generic hyperlinks to third-party websites, some of which directly compete with Complainant’s business. Complainant claims that Respondent profits from these hyperlinks by receiving pay-per-click fees. Complainant provides a screenshot of the resolving website, which the Panel notes contains a hyperlink to Complainant’s official website, Complainant’s competitor “Redbox: Blue-Ray Rentals,” and the unrelated website “Newton, MA Real Estate,” among others. See Complainant’s Exhibit H. Complainant alleges that this use does not demonstrate rights and legitimate interests in the disputed domain name. The Panel agrees, and holds that Respondent’s use of the <afandango.com> domain name indicates neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
As for the <fsndango.com> domain name, Complainant alleges that the disputed domain name resolves to a website that attempts to phish for personal information. Complainant claims that a pop-up window notifies the Internet user that it is a winner when the Internet user first accesses the website. Complainant argues that after clicking “OK,” another pop-up window appears that allows the Internet user to select a prize and then enter personal information in order to obtain the prize. The Panel notes that Complainant’s screenshot indicates that Respondent uses Complainant’s FANDANGO mark in connection with the prize and requires Internet users to enter their names, phone number, and e-mail address. See Complainant’s Exhibit H. The Panel also notes that the screenshot of the resolving website also shows a place for a PIN number but that the pop-up window blocks what type of PIN number Respondent asks for. Id. The Panel determines that Respondent is attempting to phish for personal information, and concludes that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <fsndango.com> domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent has been a respondent in previous UDRP proceedings in which the panels ordered the transfer of the disputed domain names to the respective complainants. See Google Inc. v. Kovac, FA 1402160 (Nat. Arb. Forum Sept. 15, 2011); see also Wells Fargo & Co. v. Kovac, FA 1417502 (Nat. Arb. Forum Jan. 12, 2012); see also United Servs. Auto. Assoc. v. Kovac, FA 1388167 (Nat. Arb. Forum June 29, 2010). Based on these UDRP cases, the Panel finds that Respondent registered and uses the <fsndango.com> and <afandango.com> domain names as part of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant claims that the <fsndango.com> and <afandango.com> domain names are confusingly similar to Complainant’s FANDANGO mark. Complainant further argues that Respondent profits from the personal information it attempts to acquire on the <fsndango.com> domain name and from the pay-per-click fees Respondent receives from the <afandango.com> domain name. Therefore, Complainant contends that Respondent registered and uses the <fsndango.com> and <afandango.com> domain names to commercially benefit by taking advantage of Complainant’s well known mark. The Panel notes that Complainant does not specifically argue that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain names. However, the Panel believes that Respondent is attempting to create this Internet user confusion, and determines that Respondent registered and uses the <fsndango.com> and <afandango.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. 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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant further alleges that Respondent registered and uses the <fsndango.com> domain name to phish for personal information. Complainant contends that Respondent’s phishing scheme is, by itself, evidence of bad faith registration and use. The Panel finds Respondent guilty of phishing, and finds that Respondent registered and uses the <fsndango.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Finally, Complainant contends that Respondent registered the <fsndango.com> and <afandango.com> domain names because the domain names contain common misspellings or typographical errors involving Complainant’s FANDANGO mark. Complainant asserts that this is clear evidence of typosquatting. The Panel agrees with Complainant, and holds that Respondent’s 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 <fsndango.com> and <afandango.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 29, 2012
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