Jukin Media, Inc. v. Devid Aloevss
Claim Number: FA1406001563209
Complainant is Jukin Media, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, Washington D.C., USA. Respondent is Devid Aloevss (“Respondent”), Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <failarmy.us>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2014; the National Arbitration Forum received a hard copy on June 5, 2014.
On June 6, 2014, ENOM, INC. confirmed by email to the National Arbitration Forum that the <failarmy.us> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 11, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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) Rules for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy "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 usTLD Policy, usTLD 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 states that it was created in 2009 as a content and licensing resource for video owners and entertainment industry professionals; that today it is a worldwide leader in the discovery, acquisition, monetization, and distribution of user-generated content; and that it is one of the top ten YouTube partner channels as ranked by unique video views, garnering 13 million unique U.S. viewers in April 2014. Complainant’s most popular YouTube channel is FAILARMY, a compilation of humorous videos released at regular intervals and in special compilation editions, which launched July 5, 2011, and now has over 5 million subscribers, almost 900 million lifetime views, and a daily average of 1.6 million views, ranking it 75th among the most subscribed YouTube channels. Complainant subsequently registered the <failarmy.com> domain name and launched a FAILARMY website in October 2011.
Complainant asserts that it has common-law trademark rights in FAILARMY, arising from its use of the term in connection with its YouTube channel and website. Complainant has also applied for two U.S. trademark registrations for FAILARMY (as a standard character mark and in combination with a design), although neither of the applications has yet been published for opposition.
Complainant alleges that Respondent has no legitimate purpose for registering the disputed domain name; that Respondent is not and has not been commonly known by the domain name; and that Respondent is not making a legitimate noncommercial or fair use of the domain name, nor a bona fide offering of goods or services using the domain name. Complainant alleges that Respondent is using the disputed domain name for a “copycat website” that bears the FAILARMY mark, contains Complainant’s copyrighted videos, mimics the color scheme and look and feel of Complainant’s YouTube channel, and otherwise creates the impression that it is associated with Complainant’s offerings. Complainant accuses Respondent of a history of registering domain names that contain Complainant’s FAILARMY mark, including <armyfail.net>, which is the subject of a separate proceeding under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). See Jukin Media, Inc. v. Dev Aleovss / Youeves,
FA 1562258 (Nat. Arb. Forum June 19, 2014).
Complainant contends that the disputed domain name <failarmy.us> is confusingly similar to its FAILARMY mark. Based upon the allegations set forth above, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or has been used in bad faith.
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 or 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(f), 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.”).
Given the similarity between the UDRP and the usTLD Policy, the Panel may consider relevant decisions under the UDRP as applicable in rendering its decision.
Because Complainant’s trademark applications are pending, Complainant must rely here on common-law trademark rights. To show the rights required by paragraph 4(a)(i) of the Policy, Complainant must show that its claimed mark has become a distinctive identifier associated with it or its services. Relevant evidence may include sales under the mark, the nature and extent of advertising, and consumer surveys and media recognition. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.7 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/.
Complainant has presented evidence that its FAILARMY YouTube channel has over 5 million subscribers and almost 900 million views. The Panel considers this evidence sufficient to meet Complainant’s burden of showing rights under paragraph 4(a)(i) of the Policy. See Jukin Media, Inc. v. Dev Aleovss / Youeves, supra (finding common-law rights in FAILARMY based upon same evidence as presented here); Myers v. Ronald, FA 1444118 (Nat. Arb. Forum June 29, 2012) (finding common-law mark rights in FPS RUSSIA based upon evidence of 2 million subscribers to YouTube channel and 400 million views).
The disputed domain name adds only the “.us” top-level domain to Complainant’s putative mark. Accordingly, the Panel finds the domain name to be identical to a mark in which Complainant has rights under paragraph 4(a)(i). See, e.g., Trustees of Boston College v. Mark Zuckerberg, FA 1563536 (Nat. Arb. Forum July 3, 2014) (finding <bostoncollege.us> identical to BOSTON COLLEGE).
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name represents a variation of Complainant’s YouTube channel name and putative trademark. Complainant alleges, with supporting evidence, that Respondent is using the domain name in connection with a website that mimics Complainant’s preexisting YouTube channel. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct.” Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” The Panel notes that under the usTLD Policy, the requirement of bad faith registration or bad faith use is disjunctive, whereas under the UDRP it is conjunctive. As a result, the Complainant’s burden is lighter under the usTLD Policy than it would be under the UDRP.
Respondent registered the disputed domain name after Complainant’s similarly-named YouTube channel became popular, and appears to have used it solely for the purpose of attracting Internet users for commercial gain to a website designed to exploit confusion with Complainant’s channel and putative mark. Respondent has also registered and used other similarly infringing domain names in this manner, and thus has engaged in a pattern of bad faith conduct. See, e.g., Jukin Media, Inc. v. Dev Aleovss / Youeves, supra (finding bad faith under UDRP paragraphs 4(a)(ii), 4(a)(iii), and 4(a)(iv)). The Panel finds that the disputed domain name was registered or has been used in bad faith.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <failarmy.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 3, 2014
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