Dana Bissett v. Above.com Domain Privacy
Claim Number: FA1609001693416
Complainant is Dana Bissett (“Complainant”), Canada. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wonderforest.com>, registered with Above.com Pty Ltd.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2016; the Forum received payment on September 12, 2016.
On September 12, 2016, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <wonderforest.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 September 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@wonderforest.com. Also on September 14, 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 October 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant registered its WONDER FOREST mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA925215, filed Sept. 17, 2014, registered Jan. 7, 2016), and has been using it since 2011. See Compl., at Attached Annex 1. Complainant has established common law rights in the WONDER FOREST mark due to the secondary meaning created from its continuous and extensive use of the mark since 2011. Respondent’s <wonderforest.com> domain name is identical to Complainant’s WONDER FOREST mark, because domain names require the ommision of spaces and a generic top-level domain (“gTLD”) does nothing to distinguish a domain name from a mark.
Respondent holds no rights or legitimate interests in the disputed domain name. Respondent has no affiliation with Complainant’s WONDER FOREST mark and has no permission to use the mark. Respondent is not currently using the domain in connection with any goods or services and instead uses the domain name to earn sponsored ad revenue.
Respondent has offered to sell the domain name to the general public, and specifically to Complainant. See Compl., at Attached Annexs 2, 3. This is evidence of bad faith registration and use under Policy ¶ 4(b)(i). Respondent is also attempting to commercially gain from click-through fees on the hyperlinks displayed on the resolving website of the disputed domain name. This constitutes violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is in the business of providing a variety of goods and services including home décor, cell phone cases, stationary, art prints and related services.
2. Complainant registered its WONDER FOREST mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA925215, filed Sept. 17, 2014, registered Jan. 7, 2016).
3. Complainant has been using the WONDER FOREST mark since 2011. Accordingly, Complainant has established that it has common law trademark rights in WONDER FOREST acquired in 2011.
4. Respondent registered the <wonderforest.com> domain name on September 25, 2012.
5. Respondent is not currently using the domain in connection with any goods or services and instead uses the domain name to earn sponsored ad revenue.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the WONDER FOREST mark under Policy ¶ 4(a)(i). The Panel notes that Complainant has established that it has registered the mark with the CIPO (Reg. No. TMA925215, filed Sept. 17, 2014, registered Jan. 7, 2016). See Compl., at Attached Annex 1. Panels have agreed that rights exists pursuant to a valid trademark registration with the CIPO, and that a mark need not be registered in the country in which a respondent operates to confer rights in a mark. See X-SCREAM VIDEO PRODUCTIONS INC. v. IT Manager, FA 1619522 (Forum June 25, 2015) (finding that that Complainant’s registration with the CIPO appropriately confers rights in the VIDEOPAGES mark under Policy ¶ 4(a)(i); see also State Farm Mutual Automobile Insurance Company v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1579014 (Forum Oct. 8, 2014) (finding that although Respondent resides in Australia, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent resides). Panels have also agreed that rights in a mark registered with a governmental authority date back to the filing date of the mark. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Therefore, the Panel finds that Complainant has rights in the WONDER FOREST mark dating back to September 17, 2014, when Complainant filed for registration with the CIPO.
Complainant further argues that it has common law rights in the WONDER FOREST mark based on the secondary meaning it has established from continous use of the mark dating back to 2011 and thus prior to the registration of the domain name. The Panel notes that a complainant may hold common law rights under Policy ¶ 4(a)(i), that are independent of rights conferred by registration with a governmental authority. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Complainant has not provided direct evidence of the secondary meaning it has achieved in the WONDER FOREST mark, other than allegation of “continuous and extensive” use dating back to 2011. Complainant has also put its own official domain name, <the woderforest.com>, in evidence. The Panel has examined the website to which that domain name resolves and finds that it shows Complainant established its business under the name “the Wonder Forest tm blog” in 2011. Panels typically look to a variety of factors to determine if a complainant has demonstrated a secondary meaning in its mark. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as Mar. 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.). As such the Panel finds that Complainant has established common law rights in the WONDER FOREST mark dating back to 2011.
The second issue that arises is whether the <wonderforest.com> disputed domain name is identical or confusingly similar to Complainant’s WONDER FOREST mark. Complainant argues that Respondent’s <wonderforest.com> domain name is identical to its WONDER FOREST mark. Complainant contends that the omission of a space and the addition of “.com” gTLD does nothing to distinguish the disputed domain name from its mark. Panels have agreed that such changes to a mark may be ignored for Policy ¶ 4(a)(i) analysis. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Thus, the Panel finds that Respondent’s domain name is identical or confusingly similar to Complainant’s WONDER FOREST mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WONDER FOREST mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on September 25, 2012, after the established of Complainant’s common law trademark rights in 2011;
(c) Respondent has used the domain name to earn sponsored ad revenue;
(d) Complainant contends that Respondent has no rights or legitimate interests in the <wonderforest.com> domain name. Complainant submits that Respondent has no affiliation with Complainant’s WONDER FOREST mark and has received no permission to use the mark. The Panel notes that the WHOIS information for the domain name in question lists “Above.com Domain Privacy” as the registrant. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information, a lack of authorization to use the mark, and a lack of contradicting evidence in the record. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”); Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Thus, the Panel finds that Respondent is not commonly known by the <wonderforest.com> domain name;
(e) Complainant further submits that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant submits that Respondent is using the domain name to earn revenue from sponsored links for click-through traffic, and although Complainant has not submitted any evidence of this alleged use, the Panel draws the inference that the allegation is correct. Panels have found that hosting unrelated third-party links does not confer rights or legitimate interests. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Therefore, as the Panel finds that Respondent is receiving benefit from hosting such links, the Panel finds Respondent has failed to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or demonstrated a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has registered and is using the disputed domain name in bad faith. Complainant argues that Respondent’s offers to sell the domain name to the general public and Complainant are evidence of bad faith under Policy ¶ 4(b)(i). Complainant has provided email correspondence where the Respondent purportedly offered to sell the domain for $1000. See Compl., at Attached Annex 2. As the Panel finds that Respondent primarily intended for such an offer when registering the domain name, it also finds that evidence of such an offer to indicate bad faith registration and use. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Complainant also has provided evidence that Respondent is attempting to sell the domain name to the general public for an excessive cost. See Compl., at Attached Annex 3. Panels have also found this to violate Policy ¶ 4(b)(iv). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Accordingly, the Panel finds, in view of the offers of sale that were made, that Respondent acted in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant additionally argues that Respondent is using the disputed domain name to attract Internet users to its website for commercial gain. Complainant submits that Respondent receives revenue when Internet users click on one of the pay-per-click links on its resolving webpage. Panels have found that hosting unrelated hyperlinks from a confusingly similar domain name is in bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Therefore, as the Panel finds that Respondent has engaged in this conduct, it finds the disputed domain name was registered and is being used in bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <wonderforest.com> domain name using the WONDER FOREST mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
It will be noticed that Respondent’s acts of bad faith registration and use occurred after Complainant acquired its common law rights in the WONDER FOREST mark.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wonderforest.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated October 7, 2016
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