IMDB.COM, INC. v. milad / narimany / milad narimani / milad narimani / Netafraz Co.
Claim Number: FA1410001582697
Complainant is IMDB.COM, INC. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is milad / narimany / milad narimani / milad narimani / Netafraz Co. (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <imdb-dl.com>, <imdb-dl24.com>, and <imdb-dns.com>, registered with Realtime Register B.V.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 7, 2014, Realtime Register B.V. confirmed by e-mail to the National Arbitration Forum that the <imdb-dl.com>, <imdb-dl24.com>, and <imdb-dns.com> domain names are registered with Realtime Register B.V. and that Respondent is the current registrant of the names. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2014 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@imdb-dl.com, postmaster@imdb-dl24.com, postmaster@imdb-dns.com. Also on October 7, 2014, 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 November 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends the registrants all have names the comprise “milad narimani” in some form, all of the domains start with “imdb-d”, the <imdb-dns.com> and <imdb-dl24.com> domains have the same email contact, and the <imdb-dl.com> and <imdb-dns.com> domains have the same landing page. Finally, Complainant claims all of the domains are similarly structured, the WHOIS addresses for all of the domains are located in Iran, and the registrar is the same for all of the domains.
In light of the absence of a response from Respondent, this Panel finds the similarities are sufficient to conclude the domain names are commonly owned and controlled by a single Respondent who is using multiple aliases.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complaint IMDB.COM, INC. (hereinafter, “IMDB” or “Complainant”) operates the web site <imdb.com> and owns the trademark IMDB. Complainant’s IMDb service is the world’s most popular and authoritative source for movie, TV and celebrity content. The IMDb consumer site <imbd.com> is the #1 movie website in the world with a combined web and mobile audience of more than 190 million unique monthly visitors. IMDB offers a searchable database of more than 150 million data items including more than 2.7 million movies, TV and entertainment programs and more than 5.5 million cast and crew members. To date, there have been more than 100 million downloads of IMDB’s mobile apps worldwide. Id. <Imdb.com> is the 29th most-viewed website in the United States, and the 47th most-viewed website globally, according to the public statistics offered by Internet site ranking company Alexa Internet, Inc.[1] Complainant and its predecessors in interest have used the IMDB trademark since at least as early as 1996.
Through longstanding use, promotion and substantial commercial success, the IMDB mark has become well-known and famous. See Internet Movie Database, Inc. v. Temme, FA0504000449837 (Nat. Arb. Forum May 24, 2005)(finding that “Complainant is a well-known corporation” that “has been cited by numerous publications regarding its popularity… [t]hese publications indicate that Complainant's website is visited and its services used by millions of Internet users”)(emphasis added).
The IMDB trademark is registered in various countries, including the United States. “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007)(“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
Complainant's registrations for the IMDB trademark are prima facie evidence of validity, and establish Complainant's rights for purposes of the Policy. See, e.g., Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)(Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and Respondent has the burden of refuting this assumption) and Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)("Registration … with the USPTO establishes Complainant's rights in the mark.").
Complainant held valid registrations for IMDB well before Respondent registered the disputed domains.
Complainant uses the following well-known logo for its web site and business (the “IMDB Logo”).
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain names are confusingly similar to Complainant’s IMDB trademark.
Respondent’s domain names incorporate Complainant’s IMDB mark in its entirety, adding only a hyphen, an acronym (“dl” or “dns”), in one case the number “24,” and in all cases the gTLD “.com.”
Per AcronymFinder and Respondent’s own Facebook page, DL is an acronym for “download.” DNS means “Domain Name System” and refers to the protocol that translates easily memorized domain names to the numerical IP addresses needed for the purpose of locating computer services and devices.
The addition of indistinctive acronyms or numerals to Complainant’s distinctive and famous IMDB mark is insufficient to distinguish Respondent’s domain names, particularly where the additional terms have a direct and obvious relationship to movie downloads or Complainant’s movie information business. See Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA0708001059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”) and Caterpillar Inc. v. personal, D2010-2190 (WIPO Feb 8, 2011)(adding the name of a product the Complainant markets to Complainant’s mark is “likely to compound the likelihood of confusion”)(emphasis added).
See also IMDB.COM, INC. v. James, FA1403001549966 (Nat. Arb. Forum April 21, 2014)(“The disputed domain name includes Complainant’s registered mark in its entirety, prefixed by the acronym “jav” and followed by the top-level domain “.com”. These additions do not adequately distinguish the domain name from Complainant’s mark - indeed, the acronym may contribute to the confusion, in light of its relation to Complainant’s business”)(emphasis added); Internet Movie Database, Inc. v. Temme, FA0504000449837 (Nat. Arb. Forum May 24, 2005)(finding <8imdb.com>, <9imdb.com>, <imdbg.com>, <imdbn.com>, <imdbv.com> and <imdbb.com> confusingly similar to IMDB); America Online, Inc. v. Roush Enters., FA0309000193882 (Nat. Arb. Forum Oct 24, 2003)(addition of a hyphen and the word “download” “does not materially distinguish” <icq-download.com> from ICQ); Google Inc. v. Zhang, FA0901001245131 (Nat. Arb. Forum March 13, 2009)(finding <googlevideodownloads.com> confusingly similar to GOOGLE); Google Inc. v. Chen, FA1108001403007 (Nat. Arb. Forum Sept. 22, 2011)(finding <google-dns.com> confusingly similar to GOOGLE); Heeling Sports Ltd. v. Trader Star, FA1007001336965 (Nat. Arb. Forum Sep 14, 2010)(“adding numbers to Complainant’s mark fails to prevent confusing similarity under Policy ¶4(a)(i)”); Google Inc. v. NURINET, FA1305001502299 (Nat. Arb. Forum Sept. 24, 2013)(finding <google24.com> confusingly similar to GOOGLE); G. D. Searle & Co. v. SHG Resources, FA0209000125755 (Nat. Arb. Forum Nov. 18 2002)(finding <celebrex24.com> confusingly similar to CELEBREX); and Microsoft Corp. v. The Private Whois Privacy Service, FA1302001484502 (Nat. Arb. Forum March 24, 2013)(“addition of a hyphen or a top level domain name are never significant changes to a trademark under the Policy”).
For the above reasons, the disputed domain names are confusingly similar to Complainant’s IMDB trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s IMDB trademark, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as milad / narimany / milad narimani / milad narimani / Netafraz Co. Respondent is not commonly known by Complainant’s IMDB trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s IMDB trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for <imdb-dl.com> and <imdb-dns.com> is essentially a counterfeit version of Complainant’s web site, offering movie downloads and movie information using imitations of Complainant’s IMDB Logo and trade dress, e.g..
The landing page for these domains displays advertising, and as such is clearly commercial in nature.
Links on Respondent’s web site generate malicious site warnings.
Respondent’s imitation of Complainant’s IMDB Logo and web site to promote its own movie information and download service is likely to confuse and mislead the public as to Respondent’s affiliation with Complainant, and constitutes passing off. This is not a fair, nominative or otherwise legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)(“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”); Microsoft Corp. and Skype v. M-Style / Morgun, FA1303001491620 (Nat. Arb. Forum May 10, 2013)(“Respondent’s decision to make heavy usage of the SKYPE mark in promoting its domain name’s web content illustrates neither a Policy ¶4(c)(i) bona fide offering of goods and services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use”); Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010)(“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services”); and Microsoft Corp. v. Lafont, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010)(finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)).
Furthermore, Respondent’s use of domain names that are confusingly similar to Complainant’s IMDB trademark to attract consumers to Respondent’s competing movie information service is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002)(finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012)(finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); and Florists' Transworld Delivery v. Malek, FA0604000676433 (Nat. Arb. Forum June 6, 2006)(finding no rights or legitimate interests where the disputed domain was “used in connection with a business that directly competes with Complainant’s business”).
Furthermore, using domain names containing Complainant’s IMDB trademark as a means to lure visitors to potentially malicious sites or to deliver malware is not a legitimate use. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sep 23, 2010)(“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011)(finding that use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv)); and Grappone TS, Inc. v. Zhu, FA 1424557 (Nat. Arb. Forum Feb. 29, 2012)(finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)).
Respondent’s domain name <imdb-dl24.com> does not point to an active web site, even though it has been registered for more than 18 months. “One does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection 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).” Nike, Inc. v. Fang Wei et al., FA0907001272458 (Nat. Arb. Forum August 21, 2009)(citations omitted). In fact, failure to develop the site demonstrates a lack of genuine interest in the domain name. Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000). See also Sun Microsystems, Inc. v. Color Vivo Internet, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(noting that failure to make any active use of a domain name 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)); George Weston Bakeries Inc. v. McBroom, FA0703000933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); and Hewlett-Packard Co. v. Shemesh, FA0503000434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain names in bad faith.
At the time Respondent registered the disputed domain names, IMDB was famous and familiar to countless consumers worldwide. Given that Respondent is using the IMDB trademark and a modified IMDB Logo to promote its movie information site, it is clear that Respondent was not only familiar with Complainant and its mark at the time the disputed domains were registered, but intentionally adopted domain names incorporating Complainant’s mark in order to drive traffic to its web site.
Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)(finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“…it is inconceivable that Respondent could have registered the <skypehotgirls.com> domain name without actual knowledge of Complainant's rights in the [SKYPE] mark… Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”); Microsoft Corp. v. Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); and Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
Furthermore, by incorporating Complainant’s famous IMDB trademark into the disputed domains, and using imitations of Complainant’s IMDB Logo and other IMDB trade dress at the corresponding web site, Respondent creates the false impression of a site that originates with or is sponsored by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006)(finding bad faith where the respondent’s web site offered high speed internet services while giving the false impression of being affiliated with the complainant). See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001)(finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001)(“the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith”); MidFirst Bank v. Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001)(finding that respondent’s use of the disputed domain name misrepresent itself as a complainant supported a finding of bad faith); and Microsoft Corp. v. Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009)(finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Furthermore, by offering services under domain names that are confusingly similar to IMDB in order to generate advertising revenue, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s famous IMDB mark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004)(“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”); Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007)(finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”); and Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”).
Moreover, Respondent is using the IMDB trademark to promote its own movie information service, which disrupts Complainant’s related services and falls under Policy ¶4(b)(iii). See Instron Corp. v. Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006)(use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶4(b)(iii)); Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011)(featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)); and Microsoft Corp. and Skype v. ATF The Veil Super Fund, FA1211001470016 (Nat. Arb. Forum December 20, 2012)(finding that by linking to Skype’s VOIP competitors, “Respondent attempts to facilitate competition with Complainant and disrupt Complainant’s business, which indicates bad faith use and registration under Policy ¶4(b)(iii)”).
Furthermore, the fact that <imdb-dl24.com> is not active after having been registered at least 18 months is evidence of bad faith. See Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(“in order to find bad faith registration and use pursuant to Policy ¶4(a)(iii) it is not necessary that Respondent have put the domain name to any active use … failure to make an active use of the disputed domain name can, in and of itself, be evidence of bad faith registration and use of the domain pursuant to Policy ¶4(a)(iii)”); Chrisma Productions, Inc. v. Quinn Jr., FA0905001263592 (Nat. Arb. Forum July 13, 2009)(finding that Respondent’s inactive use of the <harveykorman.com> domain name constituted bad faith registration and use under Policy ¶4(a)(iii)); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)(concluding that the respondent’s failure to make an active use of the domain name satisfied the requirement of ¶4(a)(iii) of the Policy); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007)(holding that non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007)(concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)(finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Also, Respondent is using multiple domains comprising <imdb-dl###.com> to deliver its competing movie services, and <imdb-dl24.com> is presumably a former or future part of this scheme. (note that the URL is imdb-dl118.com and the right hand column indicates “Next Address imdb-dl119.com”).
Based on the foregoing, Respondent has registered the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.”).
Complainant uses the IMDB mark in connection with its business as an online database of movies, TV, and entertainment programs. Complainant owns the IMDB mark through its trademark registrations with the United State Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 2,609, 882, registered Aug. 20, 2002). Such registrations are normally sufficient to establish rights in the IMDB mark pursuant to Policy ¶4(a)(i). Complainant is not required to prove Complaint’s rights are superior to Respondent’s rights at this stage; merely that Complainant has some rights. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant’s USPTO registrations satisfy the requirements of Policy ¶4(a)(i).
Complainant claims the <imdb-dl.com> domain name is confusingly similar to Complainant’s IMDB mark because Respondent has simply added a hyphen and the letters “dl” to the mark (in addition to adding the gTLD “.com”). “dl” is a common internet abbreviation which means download. It is a generic term related to Complainant’s business. Such minor changes to a mark are not sufficient to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, Respondent’s <imdb-dl.com> domain name is confusingly similar to Complainant’s IMDB mark pursuant to Policy ¶4(a)(i).
Complainant claims the <imdb-dl24.com> domain name is confusingly similar to Complainant’s IMDB mark because Respondent has simply added a hyphen, the letters “dl” and the number “24” to the mark (in addition to adding the gTLD “.com”). “dl” is a common internet abbreviation which means download. 24 commonly means 24 hours (or a day) in internet abbreviations. These two generic terms are related to Complainant’s business. Such minor changes to a mark are not sufficient to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that the respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the complainant’s mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the gTLD “.com” was irrelevant). Therefore, Respondent’s <imdb-dl24.com> domain name is confusingly similar to Complainant’s IMDB mark pursuant to Policy ¶4(a)(i).
Complainant further claims Respondents <imdb-dns.com> domain name is confusingly similar to Complainant’s IMDB mark because Respondent has simply added a hyphen and the letters “dns” to the mark (in addition to adding the gTLD “.com”). “dns” is a common internet abbreviation which means domain name system. It is a generic term slightly related to Complainant’s business. Such minor changes to a mark are not sufficient to prevent a finding of confusing similarity under Policy ¶4(a)(i). See 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 Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to 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). Once again, Respondent’s <imdb-dns.com> domain name is confusingly similar to Complainant’s IMDB mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain names. The WHOIS information identifies a person named “Narimany” of the organization “Milad” as registrant of <imdb-dl.com>, and “Milad Narimani” as the registrant of the <imdb-dl24.com> and <imdb-dns.com> domain names. Respondent is neither licensed nor authorized to use the IMDB mark. Respondent does not controvert these facts. Respondent is not commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant claims Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. The <imdb-dl.com> and <imdb-dns.com> domain names resolve to web sites which compete with Complainant (and look very much like they are “copycat” web sites in a foreign language such as Persian or Arabic). Such use of a disputed domain name is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii)). Respondent’s competing use of the disputed domain names does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Respondent uses the <imdb-dl.com> and <imdb-dns.com> disputed domain names to attract Internet users to websites with deposit malicious code on a viewer’s computer. Such use of a disputed domain name does not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Respondent’s behavior does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Respondent’s <imdb-dl24.com> domain name does not resolve to an active website. Generally, when a respondent fails to make an active use of a disputed domain name, panels have held this lack of action does not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). This Panel agrees and finds Respondent’s failure to make an active use of the <imdb-dl24.com> domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶4(a)(iii). Respondent uses the <imdb-dl.com> and <imdb-dns.com> disputed domain names to disrupt Complainant’s business. They offer services which compete with Complainant. This almost universally constitutes bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”). Therefore, Respondent’s use of the disputed domain names to compete with Complainant’s business disrupts Complainant’s business and thus is sufficient evidence of bad faith under Policy ¶4(b)(iii).
Respondent uses the <imdb-dl.com> and <imdb-dns.com> domain names to intentionally divert confused Internet users to its own website for its own commercial gain. These disputed domain names feature web sites with the same styling and content as Complainant’s own website. These actions universally constitute bad faith registration and use pursuant to Policy ¶4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Therefore, Respondent’s use of the disputed domain names to intentionally attract Internet users to its own website for commercial gain constitutes bad faith pursuant to Policy ¶4(b)(iv).
Respondent uses the <imdb-dl.com> and <imdb-dns.com> disputed domain names to attract Internet users to websites which deposit malicious code on a viewer’s computer. This does not constitute good faith use of these two disputed domain names.
Respondent has failed to make an active use of the <imdb-dl24.com> disputed domain name. Typically, panels have held the failure to make an active use of a disputed domain name is evidence of bad faith under the penumbra of Policy ¶4(b). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). In light of the specific facts of this case, it seems evident Respondent is using this disputed domain name in bad faith pursuant to Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <imdb-dl.com>, <imdb-dl24.com>, and <imdb-dns.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 11, 2014
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