Dr. Aomawa Shields v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1611001705259
Complainant is Dr. Aomawa Shields (“Complainant”), represented by Jennifer Hughes of Law Offices of Jennifer Hughes, California, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <risingstargirls.com>, registered with GoDaddy.com, LLC.
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 November 30, 2016; the Forum received payment on November 30, 2016.
On December 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <risingstargirls.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@risingstargirls.com. Also on December 6, 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 December 26, 2016.
On January 3, 2017, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the common law service mark RISING STARGIRLS in education services, providing live and on-line instruction in the field of astronomy and astrobiology. Complainant’s Federal trademark registration in education services (IC class 041) is pending.
Complainant’s website <risingstargirls.org> is a website devoted to educating and encouraging girls of all colors and backgrounds to learn about the universe. The website is directed to an intended audience of girls and teachers. Complainant’s website provides information about its upcoming workshops geared for middle-school girls (grades 6-8), teaching and activity handbooks, and more.
The mark was first used by Complainant at least as early as 02/02/2015, when Complainant registered the domain name <risingstargirls.org>. The following month, the mark and website using the domain name and mark were publicized to thousands of and live streaming attendees of a TED talk, as detailed below.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] Respondent’s domain name <risingstargirls.com> is identical and confusingly similar to Complainant’s service mark RISING STARGIRLS and domain name <risingstargirls.org>. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Complainant began using the common law service mark RISING STARGIRLS at least as early as February 2015 and owns the domain name <risingstargirls.org>, which she registered on February 2, 2015. <Risingstargirls.org> is an educational website directed to an intended audience of both teachers and middle-school girls (grades 6-8), created in part with grants from the National Science Foundation. Complainant’s Federal trademark registration for RISING STARGIRLS (serial number 87103081) in Class 041: Education services is pending.
Respondent registered the domain name <risingstargirls.com> on February 17, 2016. <Risingstargirls.com> is a pornographic website offering webcam sex links, sex dating links, and sex chat links (e.g., Adult Dating and Sex, Adult Cam Chat, Casual Sex, Black Girls with Webcams) and a notice that it is for sale (“Inquire about this domain”).
<Risingstargirls.com> incorporates Complainant’s mark RISING STARGIRLS, and is identical and confusingly similar to Complainant’s mark.
<Risingstargirls.com> is identical to Complainant’s domain name <risingstargirls.org>, except for the generic top level domain .com extension, and is identical and confusingly similar. Top level domain names do “not affect the domain name for the purpose of determining whether it is identical or confusingly similar.” Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
The likelihood of confusion and accidental diversion is high and has already occurred numerous times. For example, on April 16, 2016, Complainant received a Facebook message from a colleague at the University of St. Andrews in Scotland, informing her of the existence of the porn website at issue, and on May 18, 2016, Complainant received a Tweet from a professor at the University of California at San Diego, after he attended her talk there that day. He urges followers to go to the <risingstargirls.org> site rather than the <risingstargirls.com> site, highlighting the possible confusion.
[b.] Complainant owns protectable rights in the service mark RISING STARGIRLS and Respondent has no right or legitimate interest in the domain name <risingstargirls.com>. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The mark was first used by Complainant at least as early as 02/02/2015, when Complainant registered the domain name <risingstargirls.org>. In March 2015, Complainant gave a TED (acronym for Technology, Entertainment and Design) talk entitled “How we’ll find life on other planets” and publicized the website to thousands of live and live streaming attendees of a TED talk by describing its mission and projecting an image of the website. Complainant’s use of the mark is for a non-profit educational purpose. Since the launch, in addition to the attendees at the live conference, there have been 1,437,265 total views (and rising) of the talk on the TED.com website. TED.com is accessed by viewers around the world, including across the United States. Educators regularly contact Complainant via the website <risingstargirls.org> to request licenses to use the educational materials that are available on the site.
Respondent created and registered the domain name <risingstargirls.com> on February 17, 2016, more than a year after Complainant began publicly using the RISING STARGIRLS name, domain name, and service mark.
Respondent has no right or legitimate interest in the disputed domain name. Respondent is neither licensed nor authorized to use the RISING STARGIRLS mark. Respondent does not offer any bona fide goods or services. The site offers “related links” that divert internet users to other sites (e.g., Adult Dating and Sex, Adult Cam Chat, Casual Sex, Black Girls with Webcams). Respondent’s offer to sell the disputed domain name to Complainant for $799.00, as set forth in more detail below in subparagraph [c.] is evidence of Respondent’s bad faith and lack of legitimate interest in the disputed domain name.
[c.] The domain name <risingstargirls.com> was registered and is being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent explicitly says in the bottom right-hand corner of the landing page for <risingstargirls.com> “Inquire about this domain,” evidence of the intent to profit from the sale of the website.
Evidence of Respondent’s bad faith intent to profit from the sale of the website can be inferred from a phone call that Complainant made regarding the purchase of the dot.com site. On April 22, 2016, Complainant contacted the telephone number listed when she clicked on “Inquire about this domain”: (855) 646-1390, and spoke with a man at that number using the email address of jvachon@godaddy.com, who informed Complainant that Complainant could buy the <risingstargirls.com> domain name for $799.00, plus $8.29 for renewal, and $15.00 per year thereafter. This man said that once this sum was paid, Complainant would own the dot.com name and they would take the offending site down immediately. The sum of $799.00 is significantly more than Respondent’s $15.00 registration expense, and evidences an intent to profit from the sale of the domain name. Respondent’s offer to sell Complainant the disputed domain name for $799.00 is evidence of bad faith under Policy ¶4(b)(i). The sale function has in the meantime been transferred from GoDaddy to Network Solutions.
According to DomainIQ.com, Respondent owns 22,163 domain names and 91% of those domains have fewer than five web site pages and are undeveloped. The average domain has 2.86 words and the most common language is English. Respondent is in the business of cyber-squatting and selling domain names to valid trademark holders.
Respondent has in bad faith ignored Complainant’s claim of rights in the service mark RISING STARGIRLS. Respondent was informed of Complainant’s claims in a letter dated July 15, 2016, sent via email and registered mail at Respondent’s addresses of record. No response was received to the email and the registered mail was returned as undeliverable.
Respondent did not answer or have an answering machine at the phone number of record. Subsequently, Complainant filed complaints with GoDaddy and ICANN that Respondent’s WHOIS contact information was not valid, however GoDaddy asserted that they were able to make contact with Respondent at its contact information. These facts evidence that Respondent intentionally and in bad faith ignored Complainant’s claim of rights.
Respondent in bad faith created a domain name that is confusingly similar to <risingstargirls.org> and likely to—and has—misled intended users of Complainant’s site, which has a high likelihood of continuing to disrupt Complainant’s nonprofit organization.
A girl of a very young age could easily and accidentally happen upon the Respondent’s pornographic site instead of an educational astronomy website. The predatory potential of Respondent’s <dot.com> site is immensely disturbing and dangerous for the young girls that may intend to visit Complainant’s <dot.org> site and devalues, tarnishes and disparages Complainant’s mark.
Respondent’s diversion of Internet users to Respondent’s website is evidence of bad faith. The continuing likelihood of confusion and disruption of Complainant’s nonprofit activities is extremely high, and the risk of danger to children, particularly girls who are Complainant’s target market, is egregious and unacceptable.
Respondent provides links to other pornographic services on the disputed domain name and presumably receives commercial gain from those hyperlinks.
In 3M, infra, a Panel found that hyperlinks and advertisements on the disputed domain name for which Respondent presumably received click-through fees was generally “indicative of bad faith under Policy ¶4(b)(iv).” Similarly, Respondent’s use of hyperlinks on its website is evidence of bad faith when Respondent presumably receives a commercial benefit from an Internet user clicking on one of the pornographic links.
B. Respondent
A. Voluntary Transfer of the Domain Name
Respondent, a foreign company, owns a portfolio of generic and descriptive domain names which it acquired through lawful and fair methods. As part of its business practice, it has a well-known dispute resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark. And, it has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, irrespective of the legitimacy of the complainant’s arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings. Transfers are typically done within one (1) business day.
Upon learning of this matter and, pursuant to its business practices, in an effort to resolve this matter expeditiously and without a substantial investment of time and expense by either party or the Panel, Respondent contacted Complainant to offer a voluntary transfer of the domain name at issue. Complainant rejected Respondent’s offer.
Therefore, without admitting fault or liability and without responding substantively to the allegations raised by Complainant herein, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, Respondent stipulates that it is willing to voluntarily transfer the Domain Name to the Complainant. For the reasons stated below, Respondent respectfully requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the Domain Name be transferred.
In numerous prior UDRP decisions, Panels have consistently ruled that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name. Such panels consistently hold that it would be improper to issue any findings of fact in such cases. For example, in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the Panel stated as follows:
[T]his Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.
Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see: Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).
In The Body Shop International plc v. Agri, Lacus & Caelum LLC, FA 679564 (NAF May 25, 2006), the complaint set forth allegations and requested that the domain name be transferred to complainant. The respondent therein, after the deadline for a response, filed a stipulation agreeing to the transfer of the domain name to the complainant. The panel limited its decision to an order that the domain name be transferred. Regarding the stipulation, the panel stated the following:
Consistent with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Because both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties. See: Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum, Jan. 13, 2004) (“Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., FA 133625 (Nat. Arb. Forum, Jan. 9, 2003); see also Alstyle Apparel/Active Wear v. Schwab, FA 170616 (Nat. Arb. Forum, Sept. 5, 2003).”
Other panels have gone further to state that it would be unwise to issue findings of fact or conclusions other than an order transferring the name:
Indeed, it would be unwise to make any other findings [other than the transfer] in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any findings of fact or compliance or otherwise, but will make the only order that is appropriate in the circumstances, which is an order for the transfer of the domain name to Complainant.
Diners Club International Ltd. v Nokta Internet Technologies, FA 720824 (NAF August 2, 2006).
Numerous other panels have followed the principle noted above in circumstances similar to the ones here including:
· U.S. Smokeless Tobacco Company, LLC v. Domain May Be For Sale, Check Afternic.com (Domain Admin / Whois Foundation), NAF Case No. FA1603001666791.
· Anadarko Petroleum Corp. v. Admin Contractor, SOL Invictus Comiti LP / Domains by Proxy, LLC, WIPO Case No. D2014-1664.
· BHP Billiton Innovation Pty Ltd. v. Domain Admin, c/o Legal Consulting & Incorporations / WhoIs Foundation, WIPO Case No. D2014-2060.
· Infoglobo Comunicacao e Participacoes S.A. v. Admin, Oversee Domain Management LLC, WIPO Case No. D2011-1378.
· Atmos Energy Corp. v. Chesterton Holdings, LLC, WIPO Case No. D2007-1793.
· SYTrading Post, Inc., v. OS Domain Holdings IV, LLC, WIPO Case No. D2008-0815.
· The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132.
· Deutsche Bank AG v. Seigler, WIPO Case No. D2000-0984.
· Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.
· Vacation Pubs., Inc. v. Portfolio Brains, LLC, NAF Case No. FA1139522.
· Int’l Edge, Inc. v. Oversee Research and Dev., LLC, NAF Case No. FA1144130.
· Kohler Co. v Wesley Atkins aka Default Profile aka N/A:2c67phrv, NAF Case No. FA760086.
· Herbalife Int’l of Am., Inc., a wholly owned subsidiary of Herbalife Int’l, Inc. v. Montanya Ltd., NAF Case No. FA733012.
· Diners Club Int’l Ltd. v. Nokta Internet Tech., NAF Case No. FA720824.
· Norgren, Inc. v. Norgren, Inc., NAF Case No. FA670051.
· Disney Enters., Inc. v. Morales, NAF Case No. FA475191.
· Met. Life Ins. Co.and Met. Prop. and Cas. Ins. Co. v. Gaines Enter., NAF Case No. FA474807.
· PSC Mgt. Ltd. Partnership v. PSC Mgt. Ltd. Partnership, NAF Case No. FA467747.
· MICROS Sys., Inc. v. Walkercity, NAF Case No. FA444485.
· Enterprise Rent-A-Car Co. v. Harold Almon, NAF Case No. FA422884.
· Lake Receptions, Inc. v. Richard Kelsey, NAF Case No. FA404428.
· Tech Int’l, Inc. d/b/a Health Tech v. Clear Choice of New York, NAF Case No. FA372828.
· Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Case No. FA212653.
· Alstyle Apparel/Active Wear v. Schwab, NAF Case No. FA170616.
· Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., NAF Case No. FA133625.
Accordingly, Respondent requests that the Domain Name be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.
PRELIMINARY ISSUE – CONSENT TO TRANSFER
Respondent consents to transfer the <risingstargirls.com> domain name to Complainant. However, GoDaddy.com, LLC (the Registrar) placed a hold on Respondent’s account after this proceeding was initiated (as the UDRP requires them to do). Therefore, Respondent cannot voluntarily transfer the disputed domain name (to anyone) while this Proceeding is still pending.
Complainant requests this Proceeding include findings of fact while Respondent requests transfer without such any findings of fact. The “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
In this case, Respondent has posted this domain name as being for sale for an amount in excess of Respondent’s costs. Respondent established a pornography site, which tends to put pressure on legitimate domain name owners. Respondent uses false contact information resulting in the registered letter being returned. Respondent did not respond to Complainant’s email before this proceeding was commenced. While Respondent claims to have a procedure in place to handle cases like this, that procedure utterly failed in this case.
The parties have paid their fees and a decision on the merits should issue.
(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 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.
While Complainant filed a registration of the RISING STARGIRLS mark with the United States Patent and Trademark Office (“USPTO”) on July 13, 2016, it does not claim to have rights in the mark through a trademark registration (likely because the trademark has not been registered). Registration with a trademark agency is not required if a complainant can establish common law rights. 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 claims common law rights in the RISING STARGIRLS mark for education services dating back to February 2015. Complainant began using the mark as early as February 2, 2015. This date is reflected in the Complaint and Complainant’s application to the USPTO. Complainant uses the <risingstargirls.org> domain name to promote education services, which was further publicized through a March 2015 TED talk (which are very popular on the internet). Complainant tries to engage young, middle school women of color in the sciences (particularly astronomy). A complainant must demonstrate that a mark has secondary meaning to establish common law rights. The evidence presented is sufficient to demonstrate a secondary meaning, which means Complainant holds common law rights in the RISING STARGIRLS mark. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); see also Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Respondent’s <risingstargirls.com> domain name is identical to the RISING STARGIRLS mark because it incorporates the mark in its entirety. The domain name lacks the space present in the mark and adds the generic top-level domain (“gTLD”) “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. Therefore, the <risingstargirls.com> domain name is identical to the RISING STARGIRLS mark. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”).
Respondent does not claim otherwise.
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 (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.”).
Complainant claims Respondent is not commonly known by the <risingstargirls.com> domain name. Complainant has not authorized Respondent to use the RISING STARGIRLS mark. Where there is no response on the merits, the WHOIS information alone supports a finding the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM.” There is no obvious relationship between Respondent’s name and the domain name. It sounds like Respondent’s name is fictitious and more of an advertisement rather than a name. Therefore, this Panel finds Respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant claims Respondent fails to use the <risingstargirls.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name is offered for sale for $799 (which is in excess of Respondent’s out of pocket costs). The resolving web page says “inquire about this domain” in the lower right hand corner. Even Respondent’s name is an advertisement. The resolving website provides links to adult oriented websites. Respondent’s use of the <risingstargirls.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum October 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).”).
Respondent does not claim otherwise.
It appears to this Panel Respondent registered this domain name using a privacy service. Respondent has not given its true name nor its true address (hence the returned mail). Therefore, Respondent has acquired no rights simply by registering this domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <risingstargirls.com> domain name in bad faith because the domain name is offered for sale in excess of out-of-pocket costs. Respondent was offered the domain name in exchange for $799.00 plus $8.29 for domain name renewal as well as $15.00 per year. This offer was made generally to the world and specifically to Complainant by telephone. This cost is far in excess of Respondent’s registration expenses. Therefore, Respondent’s registration and use of the <risingstargirls.com> domain name is in bad faith according to Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant claims Respondent has demonstrated a pattern of prior adverse UDRP decisions. Complainant refers to the following cases to establish this pattern: Vente-Privee.com, Vente-Privee.com IP S.à.r.l. v. Domain Admin, WhoIs Foundation, Domain Registries Foundation care of Legal Consulting and Incorporations, D2015-1945 (WIPO December 14, 2015); and 3M Company v. Domain Registries Foundation c/o Domain Admin. FA1614321 (Forum June 7, 2015). Each case included a consent to transfer from Respondent. Although Vente-Privee.com, Vente-Privee.com IP S.à.r.l. v. Domain Admin, WhoIs Foundation, Domain Registries Foundation care of Legal Consulting and Incorporations did not contain findings of fact, 3M Company v. Domain Registries Foundation c/o Domain Admin. did, as did the following additional cases: TGI Friday’s of Minnesota, Inc v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation, FA1604001671159 (5/24/2016), Transamerica Corporation v. DOMAIN MAY BE FOR SALE CHECK IGLOO.COM Domain Admin / Domain Registries Foundation, FA1610001700612 (12/5/2016), and Transamerica Corporation v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation / Whois Foundation, FA1610001700635 (12/5/2016). This Panel respectfully disagrees with Complainant’ conclusion. Policy ¶4(b)(ii) says “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” [emphasis added] In this case, Complainant was able to reflect its mark in a domain name. Therefore, this Panel will not find bad faith registration and use under Policy ¶4(b)(ii).
Complainant claims Respondent registered and uses the <risingstargirls.com> domain name in bad faith because the resolving websites tarnishes Complainant’s reputation in a sexually disruptive manner (if not pornographic). The resolving website includes links related to adult entertainment and this is harmful to Complainant’s education services to middle school women of color. Complainant suggested this would violate two provisions of the UDRP: Policy ¶4(b)(iii) and Policy ¶4(b)(iv). This Panel is not convinced Policy ¶4(b)(iii) is applicable because that applies between competitors and there was no evidence Complainant and Respondent compete (at least in the common sense of word). This Panel will find bad faith registration and use under Policy ¶4(b)(iv) because Respondent gets click through fees from the resolving sexually explicit web page. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 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). The Panel also finds bad faith registration and use under the penumbra of Policy ¶4(b) in light of the content of the disputed domain name. There is no doubt Respondent’s business model is (in part) predicated on embarrassing Complainant to purchase the disputed domain name because it resolves to a sexually explicit web site.
Respondent registered the disputed domain name using a privacy service (or at least a non de plume). Respondent did not provide correct contact information in its domain name registration. This raises a rebuttable presumption of bad faith registration and use in the commercial context. While Respondent has replied, Respondent has done nothing to rebut this presumption. Simply saying Respondent is a bulk purchaser of domain names does not explain why Respondent bought this particular domain name, chose to use a registration name that indicated this domain name was for sale, failed to provide correct contract information and Complainant’s “real world” attempts to contact Respondent met with failure (returned mail). This Panel will also find bad faith registration and use on these grounds.
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 <risingstargirls.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 6, 2017
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