Wiluna Holdings, LLC v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA1601001658436
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John P. Sullivan of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Domain Administrator / See PrivacyGuardian.org (“Respondent”), represented by Cy Smith, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <c4f.tv>, registered with NameSilo, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2016; the Forum received payment on January 27, 2016.
On January 28, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <c4f.tv> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 January 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 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@c4f.tv. Also on January 29, 2016, 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.
A timely Response was received and determined to be complete on February 8, 2016.
On February 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant has rights in the C4S mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,099,642, registered February 14, 2012). Respondent’s disputed <c4f.tv> domain is confusingly similar to the C4S mark as the domain merely replaces the letter “s” with “f” in the mark and adds the country-code top-level domain (“ccTLD”) “.tv.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information. Further, Respondent’s use of the domain is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain to direct Internet users to a competing adult entertainment website from which Respondent presumably receives commercial profit.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s domain competes with and disrupts Complainant’s business. Respondent’s confusingly similar domain is also used in bad faith to divert internet users from Complainant’s website to Respondent’s domain for Respondent’s commercial gain
B. Respondent
The <c4f.tv> domain name is comprised of a generic abbreviation “C4”, which should not be taken as confusingly similar under Policy ¶ 4(a)(i), as it is a publically recognized expression.
Complainant has failed to make a prima facie case showing Respondent lacks rights or a legitimate interest in the <c4f.tv> disputed domain.
Complainant has failed to provide any evidence to support its claim of bad faith registration under Policy ¶ 4(a)(iii).
C. Additional Submissions
Complainant has filed a timely Response to Respondent’s Response. In it, Complainant clarifies its claim that the disputed domain name is confusingly similar to its registered and subsisting trademarks and its subsisting domain name. It reiterates that the disputed domain name is very similar to its trademark and that the Panel should disregard the distinction Respondent sees in the gTLD “.tv”.
Respondent has also filed a timely response to Complainant’s response. In it, Respondent claims that it is using the disputed domain name innocently and that claims to the contrary are “nonsense.”
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark, that Respondent has no rights or legitimate interests in or to the disputed domain name, and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 this very well-plead proceeding, the Panel finds that the disputed domain name, <c4f.tv> is confusingly similar to Complainant’s registered trademark C4S. That is, this dispute comes down to whether “c4f” is confusingly similar to “c4s.” Respondent would have this panel adjudicate the strength of Complainant’s trademark. That is not within the jurisdiction of this Panel. Complainant’s mark appears to this Panel to be remarkably weak and, perhaps, generic; however, the registration for this trademark is subsisting on the Principal Register. As such, the Panel finds that Complainant has rights in or to the registered trademark and that those rights have been adequately plead here. As such, the Panel finds that Complainant has recognizable rights in or to its registered trademark.
Respondent contends that the <c4f.tv> domain name is comprised of a common and generic abbreviation and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)). The Policy does not contemplate Panelists making judgements regarding the strength of Complainant’s trademark.
Respondent also contends that a finely parsed comparison of the disputed domain name, <c4f.tv> and Complainant’s registered trademark, C4S, results in a finding of no confusion. Respondent urges this Panel to compare one third (one letter) of Complainant’s trademark as different and therefore the entire disputed domain name is distinguishable from Complainant’s trademark.
This, too, is beyond the scope of the analysis of a UDRP matter. The Panel is asked if the disputed domain name is identical or confusingly similar to its registered trademark. It is not asked to do a detailed, well-parsed analysis of that comparison relying on, for example, the multi-factored test in finding the likelihood of confusion in trademark infringement. As the disputed domain name is very nearly identical to Complainant’s trademark, save for one letter, the Panel finds the disputed domain name to be confusingly similar to Complainant’s registered trademark.
Respondent claims that Complainant has failed to carry its burden of proof regarding this element of the Policy. Respondent responds to this element as follows:
The present dispute should not even in[sic] the scope of the UDRP since the latter was implemented to address abusive cybersquatting, however I will reply anyway. At no time has complainant showed any evidence or proof whatsoever that the c4f.tv domain in dispute has been listed for sale, offered for trade, or negotiated in any way. The domain is used to show previews and descriptions to videos that are available on the internet. I have in no way acted to monetize this content by cybersquatting, bribery, blackmail, or anything of the such, to anyone, whatsoever.
If Respondent used the disputed domain name on completely distinct goods or services and was not in competition with Complainant in the least, its argument may have some merit. However, Respondent demonstratively uses the disputed domain name to directly compete with Complainant and drive Internet traffic. That is, Respondent is attempting to rely on confusingly similar use to allege legitimate interests. The Panel refuses to accept this line of reasoning.
When a respondent, as here, uses a disputed domain name to compete and misdirect Internet traffic, it fails to have rights or legitimate interest that the Policy will recognize. 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 18,000)(recognizing that under the policy a legitimate use of a domain name must be noninfringing 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 such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent claims that it did not inappropriately use the disputed domain name, did not attempt to sell it, and did not use it to extort an advantage from Complainant. Respondent is insulted by any claim to the contrary labeling such claims “nonsense;” however, the subjective evidence of intent demanded by Respondent to show bad faith is not necessary under the Policy.
Complainant has adequately shown that Respondent uses a confusingly similar domain name to divert Internet customers from Complainant to Respondent. Respondent would have this Panel believe that its nearly identical banner and color has no effect on the consuming public. It would also have the Panel believe that the use of a confusingly similar domain name and redirecting Internet consumers to a confusingly similar (in appearance) website is, first, a legitimate use and, second, not bad faith use and registration.
Again, the Panel refuses to take this invitation. Complainant has adequately demonstrated that Respondent, with full demonstrated knowledge of Complainant’s rights, used the disputed domain name to divert Internet users from Complainant to Respondent. Complainant’s failure to prove beyond a reasonable doubt that Respondent subjectively intended this confusion is beyond Complainant’s responsibility. Complainant has adequately demonstrated that Respondent has used a confusingly similar domain name to divert Internet customers to its web site from Complainant’s web site for profit. This is sufficient under the Policy.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <c4f.tv> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 19, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page