Fandango, LLC v. Bolama Technologies Limited / Mr Bolama
Claim Number: FA1211001470590
Complainant is Fandango, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Bolama Technologies Limited / Mr Bolama (“Respondent”), Mauritius.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fandangocom.com> and <fandangon.com>, registered with Pdr Ltd. d/b/a Publicdomainregistry.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2012; the National Arbitration Forum received payment on November 9, 2012.
On November 13, 2012, Pdr Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <fandangocom.com> domain name is registered with Pdr Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Pdr Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Pdr Ltd. d/b/a Publicdomainregistry.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 November 21, 2012, Pdr Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <fandangon.com> domain name is registered with Pdr Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Pdr Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Pdr Ltd. d/b/a Publicdomainregistry.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 November 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@fandangocom.com and postmaster@fandangon.com. Also on November 26, 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 December 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <fandangocom.com> and <fandangon.com> domain names are confusingly similar to Complainant’s FANDANGO mark.
2. Respondent does not have any rights or legitimate interests in the <fandangocom.com> and <fandangon.com> domain names.
3. Respondent registered and used the <fandangocom.com> and <fandangon.com> domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FANDANGO mark (e.g., Reg. No. 2,769,579 registered September 30, 2003), used to provide movie information services.
Respondent registered the <fandangocom.com> domain name on May 5, 2004 and registered the <fandangon.com> domain name on July 17, 2008. Respondent is using the disputed domain names to divert Internet users to its website featuring generic links to third-party websites, some of which directly compete with Complainant’s 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."
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 Panel finds that Complainant has sufficiently established rights in the FANDANGO mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. 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)).) Respondent appears to reside in Mauritius; however, pursuant to Policy ¶ 4(a)(i), Complainant may establish its rights in the FANDANGO mark in any jurisdiction.
Respondent’s <fandangocom.com> and <fandangon.com> domain names are confusingly similar to Complainant’s FANDANGO mark because they differ by only a single character, and merely add the generic term “com.” These changes do not adequately distinguish Respondent’s disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Thus, the Panel finds that Respondent’s <fandangocom.com> and <fandangon.com> domain names are confusingly similar to Complainant’s FANDANGO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent has not been commonly known by the disputed domain names where the WHOIS record identifies “Bolama Technologies Limited / Mr Bolama” as the registrant. Complainant states that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that it has not given Respondent permission to use Complainant’s mark in a domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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).
Complainant contends that Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s <fandangon.com> features links with titles such as “Movies,” “Movies Online,” and “Fandango Movie Tickets.” Respondent’s <fandangocom.com> features links such as “Movie Theaters,” “Movie Theater Showtimes,” and “Fandango.” The Panel finds that Respondent’s use of the disputed domain names to link to Complainant and Complainant’s competitors is not 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 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant provides evidence of various UDRP decisions in which Respondent was involved where the panels transferred the disputed domain names to the respective complainants. See Wells Fargo & Co. v. Bolama Techs. Ltd. / Mr Bolama, FA 1388344 (Nat. Arb. Forum June 7, 2011); Victoria’s Secret Stores Brand Mgmt., Inc. v. Bolama Techs. Ltd. / Mr Bolama, FA 1427044 (Nat. Arb. Forum Mar. 13, 2012); United Servs. Automobile Assoc. v. Bolama Techs. Ltd. / Mr Bolama, FA 1357162 (Nat. Arb. Forum Dec. 22, 2010). The Panel therefore finds that Respondent’s prior adverse UDRP proceedings constitute 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).
Respondent is using the disputed domain name to divert potential customers away from Complainant to third-party competing websites, which disrupts Complainant’s business. The Panel finds that this use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”)
Respondent is using Complainant’s registered mark and providing links to the services and products offered by Complainant and its competitors to achieve a wrongful competitive advantage and commercial gain. Complainant argues that Respondent has used the disputed domain name to set up a “click through” website, for which it likely receives revenue for each misdirected Internet user. The Panel finds that Respondent’s use of the disputed domain names to attract Internet users for commercial benefit constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See 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).
The Panel finds that Complainant has satisfied 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 <fandangocom.com> and <fandangon.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 3, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page