Fandango, LLC v. 21562719 Ont Ltd
Claim Number: FA1209001464081
Complainant is Fandango, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fanndango.com>, registered with Fabulous.Com Pty 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2012; the National Arbitration Forum received payment on September 24, 2012.
On September 25, 2012, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <fanndango.com> domain name is registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name. 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 October 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@fanndango.com. Also on October 2, 2012, the 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 October 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Fandango is America's leading source for movie information and at-home/remote ticket sales. Its services entertain and inform consumers with exclusive film clips, trailers, celebrity interviews, fan reviews and news. Complainant provides theater and show-time information and sells movie tickets over the Internet and telephone for more than 16,000 screens, enabling customers to ensure ticket availability and avoid lines at the movie theater. Complainant also offers its tickets in electronic form on customers' cell phones and other PDA devices.
Complainant has used its FANDANGO marks in commerce since at least 2000. Complainant uses these marks for the promotion of its at-home and remote movie ticket and movie information business. Complainant alleges that it has committed long and extensive efforts to establish the FANDANGO mark as identifying Complainant’s goods and services to the general public. Complainant’s marks are protected through it trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,769,579 registered Sept. 30, 2003).
Respondent’s <fanndango.com> domain is nearly identical and confusingly similar to Complainant’s marks because it differs by the addition of a single letter, “n,” from the FANDANGO marks. Further, the disputed domain name is confusingly similar to Complainant’s marks because the domain name is a clear example of “typosquatting.”
Respondent has no right or legitimate interest in the dispute domain name, and the WHOIS record illustrates this. Furthermore, Complainant has given neither permission, nor sponsorship, nor legitimate affiliation to Respondent or Respondent’s use of the dispute domain name.
Complainant issued a cease and desist letter to Respondent outlining their arguments in regards to the disputed domain name. Respondent failed to respond, which creates a reasonable inference that the allegations of the Complaint are true. Finally, the date that Respondent registered the disputed domain name was July 26, 2005.
Respondent has registered and used the disputed domain name in bad faith. Respondent is a recalcitrant, serial cybersquatter/typosquatter as it has been the named respondent in prior UDRP proceedings in which it was ordered to transfer the disputed domain name to the respective complainants.
Respondent is presently holding other domain names that appear to be straightforward examples of typosquatting. Although those domain names are not involved in this complaint, they are evidence of bad faith intent on the part of Respondent as per Policy ¶4(b)(ii).
Respondent is using the disputed domain name to divert potential customers away from Complainant and to its competitors, which is evidence of bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Furthermore, Respondent is receiving revenue by operating a “click through” website that directs Internet users to third-party websites that compete with Complainant. The use of a domain name for this purpose is evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii), (iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registrations with the USPTO for the FANDANGO mark and related marks.
Respondent registered the at-issue domain name subsequent to the Complainant acquiring rights in the FANDANGO mark.
Complainant has not authorized Respondent to use its trademark.
Respondent is using the at-issue domain name to redirect Internet users to third-party websites via pay-per-click links, some of which directly compete with Complainant’s business.
Respondent has demonstrated a pattern of bad faith registration in past domain name registrations.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes rights to its FANDANGO marks through it trademark registrations with the USPTO. Based upon such trademark registrations, the Panel concludes that Complainant has established rights in the FANDANGO mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). It is not necessary for Complainant to have established these rights in Respondent’s country of origin. See 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).
Respondent’s <fanndango.com> domain name adds a single letter “n” to Complainant’s FANDANGO mark and appends the top-level domain, “.com.” Notwithstanding the typographical inconsistencies between Complainant’s mark and the at-issue domain name, the domain name is nevertheless confusingly similar to Complainant’s FANDANGO trademark pursuant to Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); 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). Therefore, the Panel finds that Respondent’s <fanndango.com> domain name is confusingly similar to Complainant’s FANDANGO mark under Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the at-issue domain name’s registrant as an entity other than FANDANGO. Additionally, there is no evidence that tends to prove, notwithstanding the aforementioned WHOIS record, that Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <fanndango.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
Respondent uses the at-issue domain name to redirect Internet users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. These circumstances indicate that Respondent is neither using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).
Furthermore, the similarities between Complainant’s FANDANGO mark and the disputed domain name are indicative of typosquatting. Respondent’s engagement in typosquatting through its registration and use of the <fanndango.com> domain name is evidence that Respondent does not possess rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent’s past conduct and UDRP history establishes a pattern of registering domain names in bad faith under Policy ¶ 4(b)(ii). See AOL Inc. v. 21562719 Ont Ltd., FA 1402476 (Nat. Arb. Forum Sept. 8, 2011); see also Intelius Inc. v. 21562719 Ont Ltd, FA 1336877 (Nat. Arb. Forum Aug. 31, 2010); see also Stamina Prods., Inc. v. 21562719 Ont Ltd, FA 1420326 (Nat. Arb. Forum Jan. 23, 2012). Respondent’s multiple adverse past UDRP decisions illustrate bad faith 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).
In the instant case, the pay-per-click links displayed on the <fanndango.com> website promote products that compete with Complainant, thereby diverting customers from Complainant to vendors such as <netflix.com> and <goldstar.com>, both of which offer movie tickets and/or movie viewing services that compete with Complainant. The redirection of Internet users to Complainant’s competitors disrupts Complainant’s business for the benefit of Respondent and suggests bad faith registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
As mentioned, Respondent is using the at-issue domain name to receive revenue as a result of misdirecting Internet users. The <fanndango.com> domain name provides links to: <fandango.com>, <goldstar.com>, <shoptathome.com/movietickets>, <netflix.com>, <dealtime.com>, <carbonite.com>, <icims.com/onboarding>. Also as mentioned, Respondent likely receives pay-per-click compensation from the links posted at the <fanndango.com> website. By using a misspelled version of Complainant’s FANDANGO mark, Respondent is attempting to capitalize on Complainant’s well-known mark for commercial gain. These circumstances demonstrate that Respondent registered and is using the at-issue domain name 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 AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent’s typosquatting additionally shows bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fanndango.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 2, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page