Untitled Entertainment, Inc. v. Nanci Nette
Claim Number: FA1804001782023
Complainant is Untitled Entertainment, Inc. (“Complainant”), represented by Evan N. Spiegel of Lavely & Singer Professional Corporation, California, USA. Respondent is Nanci Nette (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <untitledent.com>, registered with DNC Holdings, Inc.
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 April 16, 2018; the Forum received payment on April 16, 2018.
On April 18, 2018, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <untitledent.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@untitledent.com. Also on April 18, 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 11, 2018, 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, Untitled Entertainment, Inc., uses its UNTITLED ENTERTAINMENT mark in connection with entertainment services, multimedia entertainment content, production and distribution of motion pictures, television programs, and talent management services for actors, models and musicians. Complainant has rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,608,446, registered Sep. 23, 2014). See Compl. Ex. B. Complainant also claims common law rights to its UNTITLED ENTERTAINMENT mark. Respondent’s <untitledent.com> domain name is confusingly similar and/or identical to Complainant’s mark as the domain name merely omits a space and adds a generic top-level domain (“gTLD”) “.com” to an abbreviated version of Complainant’s UNTITLED ENTERTAINMENT mark.
Respondent has no rights or legitimate interests in the disputed domain name. Further, Respondent is not commonly known by the domain name at issue based on the WHOIS information of record, and due to a lack of authorization and license from Complainant for the use of its mark. Further, Respondent does not use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the <untitledent.com> domain name resolves to a webpage featuring pay-per-click hyperlinks which direct internet users to content unrelated to Complainant. See Compl. Ex. J.
Respondent registered and is using the <untitledent.com> domain name in bad faith. Respondent made a general offer to sell the domain name. Further, Respondent has established a pattern of bad faith registration through its involvement in numerous adverse UDRP decisions. Finally, Respondent uses the domain name to create confusion with Complainant’s UNTITLED ENTERTAINMENT mark for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of entertainment services, multimedia entertainment content, production and the distribution of motion pictures, television programs, and talent management services for actors, models and musicians
2. Complainant has established it trademark rights by registration of the UNTITLED ENTERTAINMENT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,608,446, registered Sep. 23, 2014).
3. Complainant has established its common law trademark rights to the UNTITLED ENTERTAINMENT mark dating back to 1999.
4. Respondent registered the <untitledent.com> domain name on February 2, 2001 after its registration had not been renewed and Complainant having previously been the registrant.
5. The <untitledent.com> domain name resolves to a webpage featuring pay-per-click hyperlinks which direct internet users to content unrelated to Complainant.
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 Complainants have a trademark or service mark on which they can rely. Complainant claims rights to its UNTITLED ENTERTAINMENT mark through registration with the USPTO (e.g., Reg. No. 4,608,446, registered Sep. 23, 2014). See Compl. Ex. B. Registration of a mark with the USPTO is sufficient to demonstrate rights to a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Accordingly, the Panel finds Complainant has demonstrated rights to its mark per Policy ¶ 4(a)(i).
· Complainant has used the UNTITLED ENTERTAINMENT mark exclusively and continuously in the world-wide entertainment industry since 1999. See Compl. Ex. 11.
· Complainant was the registrant of the domain name at issue since 2001 until Complainant inadvertently allowed its registration to lapse in March 2018 and Respondent hijacked the domain name. See Compl. Ex. E.
· Since approximently 2006, and until March 2018, Complainant has operated and displayed its company webpage at the domain name at issue. See Compl. Ex. F.
· Complainant has received producer credit on numerous domestic and internationally released theatrical motion pictures, which, together, have resulted in its name and its website/domain being broadcast and appearing in connection with online and print media, television and motion pictures around the world for over a decade. See Compl. Ex. C.
· Complainant is publicly listed as the managers of many of Hollywood’s top talent, including over 800 other clients. See Compl. Ex. C.
· Google search results for “UntitledEnt” displays as the number one result Complainant’s website. See Compl. Ex. D.
As a result and on this evidence, the Panel finds that Complainant has common law rights to its UNTITLED ENTERTAINMENT mark dating back to 1999.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UNTITLED ENTERTAINMENT mark. Complainant argues Respondent’s <untitledent.com> domain name is confusingly similar and/or identical to Complainant’s mark as the domain name merely omits a space and adds a gTLD “.com” to an abbreviated version of Complainant’s UNTITLED ENTERTAINMENT mark. The addition of a gTLD to an abbreviated mark may not sufficiently distinguish a disputed domain name from a mark. Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). In the present case, internet users would probably read the letters “ent” to mean entertainment and hence the word “untitledent” as “untitled entertainment” which is the same as Complainant’s trademark and thus confusingly similar to the trademark. Consequently, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
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 UNTITLED ENTERTAINMENT mark and to use an abbreviated form of the mark in its domain name;
(b) Respondent registered the disputed domain name on February 2, 2001;
(c) The <untitledent.com> domain name resolves to a webpage featuring pay-per-click hyperlinks which direct internet users to content unrelated to Complainant;
(d) Respondent registered the domain name and engaged in the foregoing conduct without Complainant’s knowledge or permission;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its UNTITLED ENTERTAINMENT mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <untitledent.com> domain name lists “Nanci Nette” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <untitledent.com> domain name;
(f) Complainant contends Respondent does not use the <untitledent.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant submits that Respondent uses the domain name to resolve to a website featuring pay-per-click hyperlinks that are unrelated to Complainant’s business. Use of a domain name to resolve to a website featuring pay-per-click hyperlinks may not be considered a bona fide offering or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant alleges that screenshots of the <untitledent.com> website indicate that the site features pay-per-click hyperlinks such as, “Shop Untitled: Amazon – Amazon.com Official Site” and “Install – Untitled.” See Compl. Ex. J. Therefore, the Panel finds that Respondent uses the domain name to resolve to a website featuring pay-per-click hyperlinks and holds that Respondent failed to use the domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
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 argues Respondent registered the <untitledent.com> domain name in bad faith because Respondent made a general offer to sell the domain name. General offers to sell a domain name may be taken into account together with other evidence to show bad faith registration pursuant to Policy ¶4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant provided a screenshot of the “Sedo Domain For Sale” page for the disputed domain name, which indicates that Respondent listed the domain name for sale on March 21, 2018. See Compl. Ex. I. Therefore, the Panel finds that Respondent offered to sell the domain name and holds that Respondent registered the domain name in bad faith under 4(b)(i).
Secondly, Complainant contends Respondent engaged in a pattern of bad faith registration. A respondent’s involvement in past UDRP proceedings that resulted in findings of bad faith registration against it may establish a pattern of bad faith registration. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant provided a printout of a WIPO search list that indicates Respondent has been involved in numerous UDRP cases resulting in transfer as well as copies of some of the decisions. See Compl. Exs. L-P (Copies of cases naming Respondent as a party). Consequently, the Panel finds Respondent’s prior UDRP history establishes Respondent’s pattern of bad faith registration per Policy ¶ 4(b)(ii).
Thirdly, Complainant submits that Respondent is attempting to create a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein may evidence bad faith per 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); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002). Complainant provided screenshots of the <untitledent.com> website, which indicate that the site features pay-per-click hyperlinks. See Compl. Ex. J. Complainant submits that Respondent likely profits from Internet users clicking on the links. See Compl. p.13. As a result, the Panel finds Respondent used the domain to create confusion with Complainant’s mark for commercial gain and holds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using an abbreviation of the UNTITLED ENTERTAINMENT mark and in view of the conduct that Respondent engaged in when acquiring and using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression. In any event it is clear from the evidence and the submissions made on behalf of Complainant by its authorised representative that Complainant lost the registration of the domain name through no fault of its own and that Respondent acquired the domain name opportunistically and used it improperly in a clear case of cybersquatting.
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 <untitledent.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 14, 2018
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