Wiluna Holdings, LLC v. Zhichao Yang
Claim Number: FA1802001770582
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, and <clips4salee.com>, registered with NameSilo, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2018; the Forum received payment on February 5, 2018.
On February 7, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, and <clips4salee.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 February 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2018 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@cclips4sale.com, postmaster@cllips4sale.com, postmaster@clips4ssale.com, postmaster@clips4salle.com, and postmaster@clips4salee.com. Also on February 14, 2018, 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 March 12, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Wiluna Holdings, LLC, is the owner and operator of the website addressed by the <www.clips4sale.com> domain name.
Complainant has offered adult oriented media under its trademarks since at least as early as July 2003.
Complainant has rights in the CLIPS4SALE.COM (Reg. No. 3,508,680 registered Sep. 30, 2008) and CLIPS4SALE (Reg. No. 3,554,200 registered Dec. 30, 2008) marks through their registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s domain names are confusingly similar to Complainant’s trademarks as they wholly incorporate a variation of Complainant’s marks and merely add a duplicate letter.
Respondent has no rights or legitimate interests in the disputed domain names. Based on the WHOIS information and Respondent’s lack of permission to use Complainant’s mark in the domain names, Respondent is not commonly known by the at issue domain names. Respondent also does not use the domain names at issue in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use. Rather, Respondent diverts internet traffic to Respondent’s competing website, or to competing third-party websites, in order to commercially benefit.
Respondent’s registration and use of the domain names at issue are in bad faith. Respondent’s use of the domain names disrupts Complainant’s business by intentionally attracting internet users to competing websites for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CLIPS4SALE and CLIPS4SALE.COM marks as demonstrated by its registration of such marks with the USPTO.
Complainant’s rights in the CLIPS4SALE and CLIPS4SALE.COM marks existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, and <clips4salee.com> domain names to divert internet traffic to Respondent’s competing websites in order to commercially benefit.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registration for the CLIPS4SALE and CLIPS4SALE.COM trademarks evidences its rights in such marks for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, each at-issue domain name contains a misspelling or misprint of Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademarks where an extra letter is inserted into the marks in forming the domain name. Further, there is no doubt that Respondent picked the at-issue domain names precisely because they are easily confused with Complainant trademarks and Complainant’s trademarked <clips4sale.com> website. Importantly, the differences between each at-issue domain name -<cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, and <clips4salee.com>- and Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademark are insufficient to distinguish any of these domain names from Complainant’s trademarks for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, and <clips4salee.com> domain names are each confusingly similar to Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademarks. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name.
WHOIS information for the at-issue domain names identifies their registrant as “Zhichao Yang.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by any of the <cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, or <clips4salee.com> domain names. The Panel therefore concludes that Respondent is not commonly known by any at-issue domain name for the purposes of Policy ¶ 4(c)(ii). 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).
Furthermore, Respondent uses the at-issue domain names to divert internet traffic to Respondent’s competing website, and/or to competing third-party websites, in order to commercially benefit from click-through advertising revenue. Such use constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, and <clips4salee.com> domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each domain name, pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the at-issue domain names to disrupt Complainant’s business and create confusion as to the source, sponsorship, affiliation, and endorsement of the at-issue domain names so that it may commercially benefit by offering competing goods or services and profit from click through links. Respondent’s use of the at-issue domain name domain names, which disrupts Complainant’s business and trades upon Complainant’s goodwill for commercial gain, demonstrates bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”)
Additionally and although not expressly argued by Complainant, Respondent’s blatant intentional misspellings of Complainant’s trademark in the confusingly similar at-issue domain names shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark, and/or on viewing the domain name will confuse the domain name with its target trademark. Here, in creating each at-issue domain name Respondent modifies Complainant’s trademark by inserting an extra letter into the mark. Respondent intends that each string rendered in this manner is one that might also result from internet users inadvertently mistyping Complainant’s trademark as part of a web address thought to be related to Complainant. The mistyping internet users will then be delivered to a website (or perhaps an email address) controlled by Respondent where they may then be exploited. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cclips4sale.com>, <cllips4sale.com>, <clips4ssale.com>, <clips4salle.com>, and <clips4salee.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 13, 2018
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