Wiluna Holdings, LLC v. Edna Sherman
Claim Number: FA1512001652781
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by Dionne Heard of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Edna Sherman (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4free.org>, registered with eNom, Inc.
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 December 16, 2015; the Forum received payment on December 16, 2015.
On Dec 17, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <clips4free.org> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 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@clips4free.org. Also on December 21, 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 January 14, 2016, 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
I. Factual Background
A. Wiluna’s Trademark, Business Operations and Website
Complainant, WILUNA HOLDINGS, LLC (referred to herein as “Wiluna” or “Complainant”), is the owner and operator of the website operating at the URL www.clips4sale.com (referred to herein as the “CLIPS4SALE Website”). The CLIPS4SALE Website features adult-entertainment oriented media, offered under the trademarks CLIPS4SALE.COM, CLIPS4SALE, CLIPS4, and CLIP4 (referred to collectively as “Wiluna’s Marks”). Since at least as early as July 2003, Wiluna has used the trademarks CLIPS4SALE and CLIPS4SALE.COM in connection with the CLIPS4SALE Website, and the associated media. The CLIPS4SALE.COM domain name was registered with Network Solutions, Inc. (“NSI”) at least as early as 2003 and has been in continuous use since that time. Wiluna’s Marks are unique and distinctive to Wiluna.
Wiluna is the owner of the following U.S. registrations:
CLIPS4SALE.COM - Registration No. 3,508,680
CLIPS4SALE - Registration No. 3,554,200
CLIP4 - Registration No. 4,814,248
CLIPS4 - Registration No. 4,800,900
Clearly, through extensive and exclusive use of the Wiluna’s Marks, Wiluna has established a strong secondary meaning in Wiluna’s Marks for Wiluna’s services. Consumers and the trade have come to recognize Wiluna as the source of adult-entertainment media offered via its CLIPS4SALE.COM Website. In addition, Wiluna has created a family of “CLIPS4” and “4SALE” marks and domain names directed to Wiluna’s relevant industry and consumers.
The CLIPS4SALE.COM domain name has accumulated a great deal of goodwill via its popular CLIPS4SALE.COM website. The CLIPS4SALE.COM domain name is used to identify Wiluna as a source of its goods and services. Thus, the domain name CLIPS4SALE.COM has achieved the status of a common law trademark and is a protectable right under the Policy in addition to and as a part of Wiluna’s Marks.
B. Respondent’s Unlawful Activities
The domain name in issue is registered in the name of Respondent, “WhoisGuard Protected” and is referred to herein as “Infringing Domain Name.”
It is apparent that Respondent has targeted Wiluna’s Marks. The domain name registered by Respondent is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights. Respondent’s domain name simply replaces the term SALE in CLIPS4SALE with the term FREE to create CLIPS4FREE. Both domain names share the term “CLIPS” and the number “4” in their domain name. As such, they are virtually identical.
II. Legal Argument
Pursuant to the ICANN Rules, Wiluna must establish the following to obtain the relief it requests in this action: (1) that the Infringing Domain Name is identical or confusingly similar to a trademark or service mark in which Wiluna has rights; that Respondent has no rights or legitimate interests in the Infringing Domain Name; and (3) that Respondent has registered and used the Infringing Domain Name in bad faith. For the reasons set forth below, Wiluna submits that its Complaint satisfies each of these requirements.
A. The Infringing Domain Name is Identical or Confusingly Similar to Wiluna’s Marks
Respondent’s Infringing Domain Name wholly incorporates a variation of Wiluna’s Marks, and the CLIPS4SALE.COM domain name, and is therefore nearly identical to and confusingly similar to Wiluna’s Marks. Further, by replacing the term “SALE” in CLIPS with the term “FREE” Internet users may think that they are potentially getting the same products that Claimant offers for free, driving traffic away from Claimant’s website, which in turn could lead to profit loss for the Claimant. Moreover, Internet users searching for Claimant’s website and/or who otherwise may make a typographical error will be deceptively led to Respondent’s website. This may lead Internet users to believe that the Infringing Domain Name and the site operated under or otherwise related to the domain name, is associated or affiliated with, or sponsored or endorsed by Wiluna, when in fact it is not
As mentioned above, there can be no argument that Respondent has merely taken Wiluna’s Marks and Domain Name, and has merely deleted the term “SALE” and replaced it with the term “FREE.”
As previous UDRP Panels have recognized, the addition of a term to an established trademark or domain name or a minor modification or misspelling creates a confusingly similar domain name. See U-Haul International, Inc. v. ALCorp. N.A., Claim Number: FA0209000124739 (NAF November 4, 2002) (the fact that a domain name incorporates a Complainant’s mark “…is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”) Further, the addition of a term to an established trademark or domain name or a minor modification or misspelling creates a confusingly similar domain name. See U-Haul International, Inc. v. ALCorp. N.A., Claim Number: FA0209000124739 (NAF November 4, 2002) (the fact that a domain name incorporates a Complainant’s mark “…is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”) (and cases cited therein).
In addition, the mere replacement of the term “SALE” with the term “FREE in the CLIPS4SALE trademark (e.g., the infringing CLIPS4FREE.COM domain name) is not considered as creating a distinct mark capable of overcoming a claim of confusing similarity. See Victoria’s Secret v. Zuccarini, Claim Number: FA0010000095762 (NAF Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA FA00040000994454 (NAF May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).
B. Respondent Has no Rights or Legitimate Interests in the Infringing Domain Name
The use of a domain name, which from its outset is infringing on the trademark rights of another, can never be considered legitimate. It has been widely recognized in domain name disputes that the registration of an infringing domain name is not a legitimate use under the UDRP. See Integrated Management Solutions, Inc. v. AMMG, Inc., FA 105215 (NAF, April 11, 2002); Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO, April 18, 2000) (concluding the use of a domain name incorporating another’s trademark to direct users to a competing website is not a legitimate use); Chanel, Inc. v. Estco Tech. Group, D2000-0413 (WIPO, September 18, 2000) (recognizing that under the policy a legitimate use of a domain name must be non-infringing use); Renaissance Hotel Holdings, Inc. v. The Renaissance Cochin, Claim Number: FA0703000932344 (NAF April 23, 2007) (appropriating a Complainant’s mark to profit from it is not a bona fide offering of goods or services, and is not a legitimate use).
As stated in Technology Properties, Inc. v. Personal, Claim Number: FA96569 (NAF, March 26, 2001):
Offering bona fide services or products in connection with a website is evidence of rights and legitimate interests in the domain name. Policy ¶4(c)(i). However, offering services or products, via a confusingly similar domain name, that are comparable to the products and services of the trademark owner, is not a bona fide use of the domain name. See America Online, Inc. v. Xianfeng Fu, D2000- 1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”) (Emphasis added). As such, Respondent’s above described use of the domain name is not evidence of rights or legitimate interests in the domain name. Thus, Policy ¶4(a)(ii) has been satisfied.
See also, Underground Services, Inc. v CSS Group, LLC, Claim Number: FA96843 (NAF, April 27, 2001) (“Legitimate rights and interests do not accrue to the Respondent by way of trademark infringement.). Allowing Respondent to retain the Infringing Domain Name would do nothing more than reward infringement.
Respondent’s confusingly similar variation of Wiluna’s Marks is a blatant attempt to trade on the goodwill established by Wiluna. Consumers and/or potential consumers of Wiluna’s services or media, when searching the internet, will be directed to Respondent’s Infringing Domain Name, and then redirected to related websites containing adult entertainment media and content in direct competition with services offered by Complainant under the CLIPS4SALE Marks. However, Respondent has no connection or affiliation with Wiluna and does not have a license or consent, express or implied, to use the CLIPS4SALE Mark in a domain name or in any other manner.
Respondent was not commonly known by the disputed domain name prior to its actual knowledge of Wiluna’s rights. The inference is one of diversion of Internet traffic, not legitimate use. See Integrated Management Solutions, Inc. v. AMMG, Inc.; North Coast Med, Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000); Vapor Blast Mfg. Co. v. R & S Tech, Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001); The Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites) and Klosmea Pty. Ltd. v. Krpan, D2000- 0948 (WIPO Oct. 3, 2000) (“...the current use of the Domain Name is a thinly veiled attempt to attract, for commercial gain, persons aware of the Complainant’s products to the Respondent’s site by creating a likelihood of confusion with the Complainant’s Mark...).
Moreover, Respondent cannot rely on the fact that it was able to register the Infringing Domain Name as somehow legitimizing its infringement. As stated in TRW Inc. v. Autoscan Inc., D2000-0156 (WIPO, April 24, 2000), “If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration.”
Respondent’s registration of its infringing variation of Wiluna’s Marks, and the CLIPS4SALE.COM domain name, has no legitimate, non-infringing purpose.
C. Respondent Registered and is Using the Infringing Domain Name in Bad Faith
The ICANN Policy includes four circumstances, without limitation, that are to be considered evidence of the registration and use of a domain name in bad faith. Based upon the facts set forth in this Complaint, the third and fourth circumstances are most applicable. Pursuant to ICANN Policy 4(b)(iii) and (iv), evidence of bad faith includes registering a “domain name primarily for the purpose of disrupting the business of a competitor” and an intentional attempt by Respondent to “attract, for commercial gain, Internet users to its website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on Respondent’s website or location.” Respondent has clearly intended to capitalize upon the goodwill associated with Wiluna’s Marks, and this conduct falls squarely within the conduct described in ICANN Policy 4(b)(iii) and (iv).
Respondent merely registered a highly similar variation of Wiluna’s coined CLIPS4SALE,CLIPS4SALE.COM, CLIPS4 and CLIP4 Marks.
Respondent’s deliberate and intentional copying of Wiluna’s Marks also demonstrates the strong secondary meaning in those Marks. See, e.g., DreamWorks L.L.C. v. Grantics, Case No. D2000-1269 (WIPO December 16, 2000), citing Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989) ('proof of copying strongly supports an inference of secondary meaning;' secondary meaning found based on plaintiff's extensive use and defendant's 'deliberate and close imitation' of mark); see also Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1182 n.13 (7th Cir. 1989) (proof of intentional copying is probative evidence of "secondary meaning"' and secondary meaning found where defendant intentionally copied plaintiff's trade dress); see also Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1016 (9th Cir. 1986) ("Proof of exact copying, without any opposing proof, can be sufficient to establish secondary meaning"); see also RJR Foods, Inc. v. White Rocks Corp., 603 F.2d 1058 (2d Cir. 1979) (defendant's intentional copying constitutes evidence of secondary meaning).
Respondent’s Infringing Domain Name exists solely to direct Internet users to a website containing adult entertainment media and content. Accordingly, Respondent’s Infringing Domain Name serves as nothing more than a portal for Respondent’s infringement. Respondent’s registration and use of the disputed domain names is also evidence of bad faith under Policy ¶4(b)(iv) Numerous panels have held that using a domain name confusingly similar to a complainant’s mark to link to the competitor’s website constitutes “bad faith” under the Policy. See, e.g. Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001- 1319 (February 1, 2002) (“[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001)
In light of the foregoing, Wiluna respectfully submits that Respondent has both registered and used the Infringing Domain Name in bad faith and that the Infringing Domain Name should be transferred to Wiluna according to the Rules.
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 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(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.”).
Complainant owns the CLIPS4SALE mark (inter alia) through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,554,200, registered December 30, 2008). Complainant uses the mark in connection with its website featuring adult-oriented downloadable film clips, photographs, and other multimedia materials. Registrations with the USPTO (or other similar governmental entities) demonstrate rights in a mark under Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant claims the disputed domain name is confusingly similar to the CLIPS4SALE mark because Respondent has simply removed the word “sale” and added the generic term “free” and the generic top-level domain gTLD “.org.” Removal of a word from a mark does not remove the disputed domain name from the realm of confusing similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Further, panels have also held that the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i). See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). The TLD must be ignored for the purposes of a Policy ¶4(a)(i) determination because every domain name is required to have a TLD. In this case, Respondent’s website looks very similar to Complainant’s website, which leads internet uses to the inaccurate conclusion Respondent’s website is a free very of Complainant’s website. The disputed domain name is confusingly similar to Complainant’s CLIPS4SALE mark under 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 name, nor has Respondent been licensed or authorized to use Complainant’s mark. The WHOIS information for the disputed domain name presently lists “Edna Sherman” as registrant of the disputed domain name,which has no obvious connection to the disputed domain name. Respondent has failed to submit any response in this proceeding to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, it seems clear Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant claims Respondent does not provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to redirect Internet users to its own website, which offers links and media related to adult-oriented content (similar to Complainant’s website). Respondent’s website seems to have a similar “look and feel” as Complainant’s website, falsely suggesting Respondent’s website is a free version of Complainant’s website. Respondent’s behavior is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) and 4(c)(iii), respectively. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).
Respondent’s domain name was registered using a privacy service (although the privacy protection has been dropped for the purposes of this proceeding). This means Respondent has not publicly associated herself with the disputed domain name. This means Respondent did not acquire any rights by registering the domain name, even though Respondent offered adult-oriented video clips.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii). Respondent uses the disputed domain name to redirect Internet users to its own website, which offers competing links and media related to adult-oriented content. There is no doubt Respondent’s website looks like a free version of Complainant’s website. Such conduct disrupts Complainant’s business. Other panels have agreed with this type of analysis. 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 website). Respondent has engaged in bad faith under Policy ¶ 4(b)(iii).
Complainant claims Respondent’s use, in using a confusingly similar disputed domain name to redirect Internet users to its own website, presumably for commercial gain, indicates Respondent is acting in bad faith under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). There is no doubt Respondent’s website looks like a free version of Complainant’s website. Presumably Respondent make money with its website (otherwise it could not remain in businesses). Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
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 <clips4free.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 22, 2016
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