Wiluna Holdings, LLC v. HERMANN HOCHMAYER
Claim Number: FA1804001780199
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O'Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is HERMANN HOCHMAYER (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clips4aale.com>, <clips4sape.com>, <clips4wale.com>, and <clips4eale.com>, registered with GoDaddy.com, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on April 3, 2018; the Forum received payment on April 3, 2018.
On April 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <clips4aale.com>, <clips4sape.com>, <clips4wale.com>, and <clips4eale.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 April 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 30, 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@clips4aale.com, postmaster@clips4sape.com, postmaster@clips4wale.com, postmaster@clips4eale.com. Also on April 10, 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 May 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is the owner and operator of the website operating at the <www.clips4sale.com> domain name. Complainant has offered adult oriented media under its CLIPS4SALE.COM and CLIPS4SALE trademarks since at least as early as July 2003. It registered the CLIPS4SALE.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,508,680) on September 30, 2008, and its CLIPS4SALE mark (Reg. No. 3,554,200) on December 30, 2008. These registrations demonstrate its rights in those marks for the purposes of Policy ¶ 4(a)(i). Respondent’s <clips4aale.com>, <clips4sape.com>, <clips4wale.com> and <cllips4eale.com> domain names (the “Domain Names”) are confusingly similar to Complainant’s marks as they each incorporate the “clips4” portion of Complainant’s marks and merely add a duplicate letter or replace a letter in remainder of the marks.
Respondent has no rights or legitimate interests in the Domain Names. Complainant has not authorized or licensed Respondent to use any of its marks for any purpose. Further, Respondent does not use the Domain Names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, he uses them to divert internet users to various websites other than Complainant’s which contain adult oriented material. Finally, Respondent is not commonly known by the Domain Names based on the WHOIS information of record.
Respondent registered and is using the Domain Names in bad faith as the domain names are used to divert Internet users to web sites other than Complainant’s for commercial gain. Further, Respondent has engaged in typosquatting which is further evidence of bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Multiple Domains
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The WHOIS records submitted as Exhibit 9 to the Complaint show that all four of the Domain Names are registered to “Hermann Hochmayer,” who is shown as having the same mailing and email addresses and telephone number with respect to all four of them. Additionally, the web sites resolving from them, as shown on Complaint Exhibits 10 through 13 inclusive, share common characteristics, such as the services offered, the general format and page lay-out, and the font and color of print appearing on the pages. On this evidence the Panel finds all four Domain Names are registered to the same person, and will proceed as to all of them.
Merits of the Case
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations, 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 makes the findings and determinations set forth below with respect to the Domain Names.
Complainant registered its CLIPS4SALE.COM mark (Reg. No. 3,508,680) with the USPTO on September 30, 2008, and its CLIPS4SALE mark (Reg. No. 3,554,200) on December 30, 2008. See, Complaint Exhibits 1 & 2. Those registrations are sufficient to demonstrate its rights to the marks for the purposes of Policy ¶ 4(a)(i). Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)), BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainants’ registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant has demonstrated its rights to the CLIPS4SALE.COM and CLIPS4SALE marks.
Respondent’s <clips4aale.com>, <clips4sape.com>, <clips4wale.com>, and <clips4eale.com> Domain Names are confusingly similar to Complainant’s marks, as each incorporates the “Clips4” portion of Complainant’s mark verbatim and merely misspells the remainder of the mark. Misspelling a mark in a domain name is insufficient to distinguish it from a complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”).
Based upon the forgoing, the Panel finds that the Domain Names are confusingly similar to the CLIPS4SALE.COM and CLIPS4SALE marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized Respondent to use any of its marks for any purpose whatever, (ii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web sites resolving from them offer services in the same industry in which Complainant operates, and this cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Names, and (iii) Respondent is not commonly known by any of the Domain Names. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Exhibit 9, the Domain Names are registered to “Hermann Hochmayer,” which name bears no resemblance to the Domain Names. This is competent evidence that Respondent is not commonly known by the any of the Domain Names. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized the Respondent to use either its CLIPS4SALE.COM or CLIPS4SALE mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, all Domain Names resolve to web sites that contain links to services offering opportunity for persons interested in modeling in the sexually-oriented film industry to find work. See, Complaint Exhibits 10 through 13 inclusive. Complainant’s web site, a screenshot of whose home page is attached as Complaint Exhibit 5, offers sexually-oriented audio-visual material. Thus, while the parties offer somewhat different services, they do operate in the same industry, and Respondent is using the Domain Names containing Complainant’s mark to attract Internet traffic to his sites to promote his own business interests there. Such uses of domain names do not qualify as using them in connection with a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)), CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Names set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration of those domains. Internet users searching for Complainant’s website may incorrectly believe that the Domain Names and Respondent’s web sites are associated or affiliated with, or sponsored or endorsed by Complainant. Respondent is clearly using them to attract, for commercial gain, Internet users to his web sites by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its web sites within the meaning to Policy ¶ 4(b)(iv). DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Further, according to the USPTO registration statements for CLIPS4SALE.COM and CLIPS4SALE attached to the Complaint as Exhibits 1 and 2, Complainant has used those marks since at least 2003. Given that presence in the sexually-oriented film industry, and the fact that Respondent incorporated the “Clips4” portion of those marks verbatim into his Domain Names, it is clear that he knew of Complainants’ marks when he registered the Domain Names, which he did in September 2017. See, Complaint Exhibit 9. Indeed, it is evident that Respondent registered them precisely because they do contain Complainant’s mark and would likely attract Internet traffic to his sites. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent clearly knew of Complainant and its mark when he registered the Domain Names, and this is clear evidence of bad faith registration.
Finally, Respondent has engaged in typosquatting, which in itself supports a finding of bad faith under the Policy. Typosquatting consists of intentionally misspelling a domain name in a manner that causes it to appear at first glance to be the complainant’s mark but is nevertheless slightly different, and this is independent evidence of bad faith. Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Respondent’s misspellings of the “sale” term in Complainant’s marks, with the replacement letters being located so closely on the keyboard to the replaced letters, is clear evidence of intent to deceive, and constitutes evidence of bad faith registration and use.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <clips4aale.com>, <clips4sape.com>, <clips4wale.com>, and <clips4eale.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: May 4, 2018
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