GIPHY, INC. v. ANDRIUS BEISBOLAS
Claim Number: FA1608001686678
Complainant is GIPHY, INC. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, United States. Respondent is ANDRIUS BEISBOLAS (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <porngiphy.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2016; the Forum received payment on August 3, 2016.
On August 2, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <porngiphy.com> 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 August 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@porngiphy.com. Also on August 4, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 provides mobile application software and an online website providing access to an online database of animated Graphics Interchange Format (“GIF”) files. Complainant has registered the GIPHY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,566,831, registered July 15, 2014), which demonstrates Complainant’s rights in its mark. The <porngiphy.com> domain is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds the generic term “porn” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the terms of the domain. Complainant has not authorized Respondent to use Complainant’s GIPHY mark. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website featuring graphic pornographic material.
Respondent registered and is using the domain in bad faith. First, Respondent’s use of the domain to display pornographic content is evidence of bad faith. Second, given the worldwide use and fame of Complainant’s GIPHY mark, Respondent registered the domain with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, GIPHY, INC., provides mobile application software and an online website providing access to an online database of animated GIF files. Complainant has rights in the GIPHY mark through registration with the USPTO (Reg. No. 4,566,831, registered July 15, 2014). The <porngiphy.com> domain is confusingly similar to Complainant’s mark.
Respondent, ANDRIUS BEISBOLAS, registered the <porngiphy.com> domain on November 16, 2015.
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the terms of the domain. Complainant has not authorized Respondent to use Complainant’s GIPHY mark. Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website featuring graphic pornographic material.
Respondent registered and is using the <porngiphy.com> domain in bad faith. Respondent’s use of the domain to display pornographic content is bad faith. Respondent registered the domain with actual knowledge of Complainant’s GIPHY mark and rights therein.
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(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 (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 has rights in the GIPHY mark under Policy ¶ 4(a)(i) through registration with the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <porngiphy.com> domain is confusingly similar to Complainant’s GIPHY mark under Policy ¶ 4(a)(i) as it incorporates the mark in its entirety and merely adds the generic term “porn” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <porngiphy.com> domain. Complainant has not authorized Respondent to use Complainant’s GIPHY mark. Respondent is not commonly known by the domain under Policy ¶ 4(c)(ii). The WHOIS information lists “ANDRIUS BEISBOLAS” as registrant of the domain. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Instead, Respondent’s domain resolves to a website featuring graphic pornographic material. A respondent lacks rights and legitimate interests where it uses a confusingly similar domain to feature pornographic content. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (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)); see also Am. Online, Inc. v. Bates, FA 192595 (Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”).
Respondent’s use of the <porngiphy.com> domain to display pornographic content constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
Respondent registered the <porngiphy.com> domain with actual knowledge of Complainant’s GIPHY mark. Therefore, Respondent registered the domain in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <porngiphy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 14, 2016
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