Wicked Weasel Pty Ltd v. Kulich / GS
Claim Number: FA1502001604785
Complainant is Wicked Weasel Pty Ltd (“Complainant”), represented by Karl Gye of Lawsearch Australia Pty Ltd, Byron Bay, Australia. Respondent is Kulich / GS (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microminimus.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Forum electronically on February 12, 2015; the Forum received payment on February 12, 2015.
On February 16, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <microminimus.us> 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 February 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2015 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@microminimus.us. Also on February 17, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the MICROMINIMUS mark to identify its services with regards to Internet chat rooms and electronic bulletin boards for transmission of messages concerning bikinis and beach life, general interest, classifieds, transmission of photographic images and photo sharing; providing user access to computer databases; and instant messaging; all non-pornographic in nature. Complainant has registered MICROMINIMUS with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,061,925, registered Dec. 27, 2011), which demonstrates rights in the mark. The <microminimus.us> domain name is confusingly similar to the MICROMINIMUS mark as the domain name incorporates the mark in its entirety and adds the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <microminimus.us> domain name. Respondent is not commonly known by the disputed domain name or any variant thereof. Further, Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a web site depicting models in a manner that is pornographic in nature and, as such, may tarnish the reputation of Complainant.
Respondent is using the disputed domain name in bad faith. Respondent is using the disputed domain name to disrupt Complainant’s business and to intentionally attract Internet users to its own website for commercial gain. Additionally, Respondent is using the <microminimus.us> domain name in connection with adult-oriented material, proscribed by Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Despite the Panel having asked Complainant for a word processing copy of its complaint, Complainant failed to provide one. Since the applicable rules allow a PDF filing to commerce a proceeding, the Panel has elected to proceed with the case, even though the utility of this decision may be limited to future readers because Complainant’s submission cannot be quoted at length.
(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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 MICROMINIMUS mark to identify its services regarding the sale and promotion of bikinis. Complainant registered the MICROMINIMUS mark with IP Australia and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,061,925, registered Dec. 27, 2011). Such registrations adequately demonstrate its rights in the mark for the purposes of Policy ¶4(a)(i).. Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant claims the <microminimus.us> domain name is confusingly similar to the MICROMINIMUS mark because the domain name incorporates the mark in its entirety and merely adds the ccTLD “.us.” The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶4(a)(i) analysis. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). A ccTLD (and gTLD for that matter) is disregarded in determining if a domain name is confusingly similar to a mark.
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 is not commonly known by the <microminimus.us> domain name or any variant of the MICROMINIMUS mark. The WHOIS information merely lists “Kulich / GS” as the registrant. This name has no obvious reference to the disputed domain name. There is nothing in the record which would provide any basis for finding Respondent is commonly known by the disputed domain name in accordance with 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 is not using the disputed domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent is using the disputed domain name to divert Internet users to a web site featuring adult-oriented material which can be viewed for a monthly fee. Respondent’s initial web page bears a superficial similarity to Complainant’s web page. Using a confusingly similar domain name to divert Internet users to an adult-oriented web site constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶4(c)(iii)).
Finally, Respondent’s WHOIS contact information is incorrect. For example, there is no address as listed in the WHOIS information. This creates a rebuttable presumption Respondent has no rights to the disputed domain name. Respondent has done nothing to rebut that presumption. Respondent has not publicly associated itself with the domain name in any way. Respondent cannot have any rights under these circumstances.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). Respondent redirects Internet users to its own website (BikiniRiot.com, which is owned by a nominee). This web site features a variety of adult oriented content (not just still pictures of bikini models, but videos of bikini models and picture of naked women). Such behavior suggests Respondent registered and uses the domain name in bad faith under Policy ¶4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site). Respondent has offered no explanation. Therefore, Respondent’s disruptive behavior constitutes bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent uses the disputed domain name to intentionally redirect Internet users to its own website for commercial gain by creating a likelihood of confusion as to its relationship with Complainant. Looking of the contents of the two web sites, confusion is likely. Respondent’s web site allows visitors to “join” for $8.33/month (presumably for the privilege of viewing a number of bikini videos). This amounts to bad faith registration and use pursuant to Policy ¶4(b)(iv) because Respondent is profiting off of the public’s confusion with Complainant’s web site. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant claims Respondent is using the <microminimus.us> domain name in bad faith to direct Internet users to a web site featuring adult-oriented material in violation of Policy ¶4(a)(iii). Respondent’s use of the disputed domain name to direct Internet users to an apparently adult-oriented website constitutes bad faith under Policy ¶4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name).
Finally, Respondent appears to have used fictitious information to register the domain name in the first place. This raises the rebuttable presumption of bad faith in the commercial context (and charging a monthly fee definitely makes it commercial). Respondent has done nothing to rebut that presumption. This factor alone justifies a finding of bad faith registration and use.
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 <microminimus.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, April 23, 2015
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