Insomniac Holdings, LLC v. Mark Daniels
Claim Number: FA1706001735969
Complainant is Insomniac Holdings, LLC (“Complainant”), represented by Christopher Varas of Kilpatrick Townsend & Stockton LLP, Washington, USA. Respondent is Mark Daniels (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <edcorlando.info>, <edcorlando.net>, <edcorlando.org>, <edcorlando.xyz>, and <edclasvegastickets.com>, registered with GoDaddy.com, 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 June 15, 2017; the Forum received payment on June 15, 2017.
On June 16, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <edcorlando.info>, <edcorlando.net>, <edcorlando.org>, <edcorlando.xyz>, and <edclasvegastickets.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2017 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@edcorlando.info, postmaster@edcorlando.net, postmaster@edcorlando.org, postmaster@edcorlando.xyz, postmaster@edclasvegastickets.com. Also on June 16, 2017, 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 July 13, 2017, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the EDC mark in connection with its various Electric Daisy Carnival music festivals, which take place all over the world. Complainant registered the EDC mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,090,760, registered Jan. 24, 2012), which demonstrates its rights in the mark. See Compl., at Attached Annex F. The disputed domain names are confusingly similar to Complainant’s mark because they incorporate the EDC mark in its entirety, and contain only minor additions. The geographic terms “Orlando” and “Las Vegas” are insufficient to differentiate the disputed domain names from Complainant’s marks because they are locations associated with Complainant’s business activities (since Orlando, Florida and Las Vegas, Nevada host two of Complainant’s biggest festivals each year). Further, the generic term “tickets” is also insufficient to distinguish the disputed domain names, since Complainant’s events all require tickets for entry. Finally, addition of any of the various generic top-level domains (“gTLD”) also does not meaningfully distinguish the domain names from Complainant’s registered mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any of the five domain names, nor has Complainant authorized Respondent to use the EDC mark contained therein for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain names are either inactive, resolve to sites containing pay-per-click hyperlinks, offer services that compete with those of Complainant, or attempt to pass off as Complainant. See Compl., at Attached Annex K.
Respondent registered and continues to use the disputed domain names in bad faith. Respondent’s bad faith is evidenced by a prior UDRP proceeding also involving Complainant and the EDC mark, which resulted in a transfer of the confusingly similar domain name. See Compl., at Attached Annex I, J. Further, Respondent’s use of the disputed domains in this case involves attracting Internet users to its site using Complainant’s notoriety, so that it may financially profit by way of pay-per-click advertisements and the revenue it obtains by impersonating Complainant or usurping Complainant’s would-be customers. In light of the other evidence, Respondent’s inactive holding of two of the domain names also provides evidence of its bad faith registration and use. Finally, Respondent should have had constructive notice of Complainant’s rights in the EDC mark because of its USPTO registration, and must have had actual notice of these rights because of the mark’s widespread notoriety.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain names between September 14, 2016 and November 22, 2016. See Compl., at Attached Annex 1.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 Panel finds that the disputed domain names are confusingly similar t Complainant’s trademark, EDC. Complainant has adequately pled its rights and interests in and to that trademark. Respondent arrives at the disputed domain names by merely adding generic geographical names or the word “tickets” and various g TLDs to the mark. This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no permission or license to register the disputed domain names. Respondent is not commonly known by the disputed domain names.
Respondent’s use of the disputed domain names’ resolving sites does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant’s assertions may be grouped into several categories, based on the appearance and function of the disputed domain names’ resolving sites. First, Complainant asserts that Respondent does not ‘use’ the <edcorlando.info> or <edclasvegastickets.com> domain names at all—rather, these domain names resolve to a blank site. See Compl., at Attached Annex K (showing screenshots of the respective resolving webpages, neither of which display content). Failure to make active use of (or present evidence of preparation to use) a disputed domain name may evince a lack of legitimate interest in the same. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). As such, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of legitimate interest in the <edcorlando.info> and <edclasvegastickets.com> domain names.
Next, Complainant contends that Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering or legitimate noncommercial or fair use. Complainant asserts that the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements. See Compl., at Attached Annex K (showing screenshots of the resolving webpage, which contains advertisements and links). Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Therefore, the Panel finds that Complainant has sufficiently alleged Respondent’s lack of legitimate interest in the <edcorlando.xyz> domain name for purposes of Policy ¶ 4(a)(ii).
Finally, Complainant asserts that Respondent uses <edcorlando.net> and <edcorlando.org> to resolve to websites that offer products and services that compete with those of Complainant. The first of these, Complainant contends, resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant. Compare Compl., at Attached Annex K (screenshot of the disputed domain name’s resolving site) with Compl., at Attached Annex L (screenshot of Complainant’s ‘Electric Daisy Carnival’ website). Complainant argues that Respondent uses or intends to use the visual similarity of the <edcorlando.net> resolving site to Complainant’s in order to confuse Complainant’s would-be customers and generate revenue. A respondent’s attempted ‘passing off’ in this manner does not constitute a bona fide use of any kind. See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names). Additionally, Complainant argues that Respondent also uses <edcorlando.org> for personal profit; here, instead of mimicking Complainant’s website on the disputed domain name’s resolving site, Respondent diverts internet traffic to Respondent’s personal, unrelated commercial website. See Compl., at Attached Annex K (screenshot of the disputed domain name’s resolving site, which seems to provide details of the current UDRP proceeding concerning the domain name). Capitalizing on the goodwill and notoriety of marks in order to divert Internet traffic for financial gain is also not a bona fide offering of goods or services for purposes of the Policy. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
As such, the Panel finds that Complainant sufficiently made its prima facie showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).
Complainant makes two prominent assertions that fall within the articulated provisions of Policy ¶ 4(b): that Respondent has engaged in a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii); Respondent uses the disputed domain name to disrupt Complainant’s business for commercial gain of the kind articulated in Policy 4(b)(iv).
First, Complainant alleges that Respondent exhibited similar infringing behavior in 2016 (registering a domain name containing the EDC mark), leading Complainant to file a complaint with the UDRP and, ultimately, a finding against Respondent. See Compl., at Attached Annex I (a copy of the Decision in Insomniac Holdings, LLC v Mark Daniels/Idrive Media Group, FA1692320 (Forum Oct. 15, 2016), in which the disputed domain name was transferred from Respondent to Complainant). Importantly, Complainant also notes that Respondent registered the disputed domain names in this case mere days after receipt of the Complaint in the aforementioned case. See Compl., at Attached Annex A (WHOIS information, showing registration dates of the disputed domain names between Sept. 14, 2016 and Nov. 22, 2016, after Complaint filing on Sept. 8, 2016). A prior history of unfavorable UDRP decisions may provide evidence of a respondent’s bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Additionally, Complainant contends, Respondent uses the disputed domain name to attract Internet users in order to generate personal revenue by passing off as Complainant. See Compl., at Attached Annex K, L (screenshots of Respondent’s impersonating website and Complainant’s genuine website, respectively). Capitalizing on the goodwill and notoriety of widely known marks in this way can evince bad faith use and registration under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) Therefore, the Panel concludes that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶¶ 4(b)(ii) or (iv), or both.
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant argues that Respondent engages in inactive holding of two of the disputed domain names—<edcorlando.info> and <edclasvegastickets.com>-- which Complainant contends that, in itself, is evidence of bad faith. Inactive holding of a disputed domain name, particularly when the domain name is one of many containing a complainant’s registered mark, may in some circumstances be evidence of a respondent’s bad faith. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”). Therefore, the Panel considers Respondent’s inactive holding of <edcorlando.info> and <edclasvegastickets.com> to be evidence of bad faith for purposes of Policy ¶ 4(a)(iii).
Finally, the Panel finds that Respondent had actual notice of Complainant’s prior rights and interests to the trademark EDC. Given Respondent’s systematic use of the EDC mark in various disputed domain names and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to the trademark EDC.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <edcorlando.info>, <edcorlando.net>, <edcorlando.org>, <edcorlando.xyz>, and <edclasvegastickets.com> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: July 15, 2017
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