Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC
Claim Number: FA1805001787275
Complainant is Jeffrey Dean Lindsay (“Complainant”), Wisconsin, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mormanity.com>, registered with Sea Wasp, 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 May 17, 2018; the Forum received payment on May 17, 2018.
On May 18, 2018, Sea Wasp, LLC confirmed by e-mail to the Forum that the <mormanity.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 May 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@mormanity.com. Also on May 23, 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 June 15, 2018, 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. 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
This complaint pertains to the US trademark “Mormanity” (Reg. No. 4,949,676) in Class 35, with the following description of goods and services:
Marketing the goods and services of others by providing reviews and hyperlinks; On-line promotion of computer networks and websites; Promoting and marketing the goods and services of others by providing related articles and links; Promoting the goods and services of others by providing a website featuring relevant blog posts and links; Promoting the goods and services of others by providing related articles and links; Promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; Providing a website featuring information about political issues; Providing an internet website featuring news and information in the field of national and international politics; Providing business information via a website; Provision of space on websites for advertising goods and services; Promoting the goods of others, such as books, games, and movies, by providing a website featuring product reviews and discount information; Promoting the goods and services of others, such as educational products, games, books, photography, travel services, and movies, by providing a website featuring product reviews and discount information; Providing a website promoting planned-giving for charitable and non-profit organizations of others; Promoting religious-themed goods and religious services by providing a website featuring product reviews and discount information; Providing a website featuring information about political issues pertaining to religious liberty, family issues, marriage equality, and non-discrimination policies; Providing a website featuring information about retail store services featuring religious-themed goods.
These services have long been in use with respect to the “Mormanity” mark.
Of particular relevance in this case are the following: “Promoting religious-themed goods and religious services by providing a website featuring product reviews and discount information; Providing a website featuring information about political issues pertaining to religious liberty, family issues…; Providing a website featuring information about retail store services featuring religious-themed goods.”
Though the mark was registered on May 3, 2016, the unique and coined term “Mormanity” has been in steady commercial use since 2004 (first use in commerce listed as May 28, 2004). Commercial use began on the LDS-themed blog, Mormanity at Mormanity.blogspot.com and at JeffLindsay.com in 2004 as well, and later on other religious-themed sites later such as Orson Scott Card’s NauvooTimes.com. The Mormanity blog has commercial aspects involving promotion of Mormon-themed and religious-themed services and products such as books, websites, etc., and also provides links to pages at JeffLindsay.com with Google ads, etc.
FACTUAL AND LEGAL GROUNDS
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
I am the owner of the US trademark “Mormanity” (Reg. No. 4,949,676) in Class 35 with a listed first use in commerce of May 28, 2004. The Mormanity blog was launched in early 2004 with a distinctive, unique, coined name to describe a religious-themed blog with goods and services related to Mormon issues (The Church of Jesus Christ of Latter- day Saints), family issues, religious liberty, Christian topics, etc. Common law rights to the unique name thus began in 2004. The blog and its audience were not limited to any specific region and is generally available anywhere in the US or the world. Articles have focused on diverse LDS issues ranging from issues in Utah or Wisconsin, where I lived at the time the blog was founded, as well as many other states and countries.
As the Mormanity blog rapidly became well known shortly after launch and was cited on many LDS sites, an apparent cyber squatter registered Mormanity.com in 2005 before I realized the need to do so. “Mormanity” in Mormanity.com is identical to my mark.
Mormanity.com is confusing relative to my mark because it frequently displays ads directed to Mormon-themed topics, products and services, causing readers looking for the actual Mormon-themed Mormanity® blog to think they have found it. Various forms of display provided by Mormanity.com include:
· a variety of Latter-day Saint (LDS)/Mormon themed links (“Mormon Church Archives,” “Mormon garments” [a type of underwear related], “LDS Distribution Services”)
· links for terms such as “Mormon,” “Mormon Faith,” etc.
“Mormanity” is my unique and fanciful term, coined as a combination of “Mormon” and “Humanity.” As shown in more detail in the following section, it was only after this term came into use in the religious community that the defendant seized the domain and used it merely for ads to take advantage of my work in creating and promoting the Mormanity mark.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
1. Respondent is not known for any association with Mormon topics, Mormon-related business or the Mormon faith, and does not appear to have any legitimate business related to the mark “Mormanity” apart from providing parking pages with ads.
A search of WHOIS information shows no connection of Lisa Katz to any such legitimate interest. Exploration of the Mormanity.com website shows it is nothing more than a parking page providing ads or a means for automatic redirection to various ad pages.
There is no hint of Mormon-themed content or services provided by the Respondent.
A relevant decision from the ADR Forum involving the Respondent helps clarify the legal basis for the lack of any rights or legitimate business interests in the Respondent’s use of domain parking features that provide links apparently for pay or the use of redirects to other sites offering links apparently for pay. See The Lincoln Electric Company v. Lisa Katz / Domain Protection LLC, Claim Number: FA1509001640294, also at http://www.adrforum.com/domaindecisions/1640294.htm. An excerpt follows:
Complainant alleges that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <lincolnelectricwelders. com> domain name resolves to a website containing links to third parties such as “Lincoln Wire Feed Welders,” “Divorce Las Vegas,” and “Fabrication Welding Jobs.” Hosting third party links, whether related to or unrelated to a complainant, has been found to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Accordingly, the Panel finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy
¶4(c)(i) and ¶4(c)(iii).
The Respondent’s use of my mark, Mormanity, shows similar characteristics to Respondent’s previous use of LincolnElectricWelders.com, and the reasons for the Respondent’s lack of legitimate business interests or rights in that area are substantially the same in both cases.
2. The timing of the filing coupled with the lack of content other than ads points to the lack of legitimate interests.
The Respondent filed for registration of a domain name based on the unique and coined term, Mormanity, after that name had become well known in the Mormon online community and broader religious community due to my Mormanity blog. When the Respondent filed for Mormanity.com on Nov. 29, 2005, my Mormanity blog had already been listed for months in Wikipedia’s article “Mormon blogosphere” as a “notable” solo blog. Over a year earlier, it had been mentioned by a leading LDS blog, Times and Seasons, where I was subsequently invited to provide several guest posts.
Support for the well-known nature of my Mormanity blog includes the annex from Archive.org's version of the well known Times and Seasons LDS blog in 2004 that introduces me as a guest blogger while citing my Mormanity project. The significance of Times and Seasons as well as Mormanity in the LDS online community is mentioned in the Wikipedia article on the “Bloggernacle” and also in the article about Times and Seasons alone from Wikipedia. Numerous mentions such as those in Times and Season plus my websites would have allowed one monitoring the LDS online community to learn of the mark Mormanity. This is also evidence for the bad faith nature of the filing, the subject of the following section.
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
1. The design of the infringing site shows that is based on attracting traffic related to the Complainant’s mark solely for ad revenue, indicative of a bad faith filing.
The nature of the infringing site shows that it is based on attracting Mormon-related traffic solely for the purpose of obtaining ad revenue. There is no original content of any kind. It is merely a commonly used template (parking page) or an automated redirect to other domains, all eventually to display a list of links often related to the site from which it is striving to draw traffic. It relies on confusing visitors in hopes of drawing clicks on the ads (attracting internet users for commercial gain by creating a likelihood of confusion with the original Mormanity website).
Like many bad faith sites, there is no legitimate original content or legitimate business content on the site and the provided ad content sometimes involves redirects to various advertising sites such as Searchnet.net depending on the location or IP address or other information pertaining to the viewer. Examples of redirects to other ad sites include:
· Zunmi.cn, a screenshot taken on a iPhone redirected from Mormanity.com while in Shanghai on May 12, 2018. the screenshot shows many Chinese ads and links, including a lower ad that appears to be for a gambling/gaming site (poker cards are displayed and a model). “Mormanity.com” is still displayed on the upper left of the screen, in spite of the redirected URL.
· Dopa.com, an advertising site apparently for Chinese users. A Jan. 3, 2018 screenshot from an iPhone showing Dopa.com after being automatically redirected from Mormanity.com while accessing the Internet in China.
· PrizeMarathon.stream, a site providing ads such as a pop-up announcing the viewer has won a prize from Amazon. A screenshot from a redirected from Mormanity.com on Jan. 3, 2018
· Searchnet.com, where Mormanity.com when viewed on a Macintosh computer redirected to a list of links (ads) at Searchnet.com.
2. The site follows the business model of other obviously bad faith registrations that have been filed by the defendant, showing a pattern of bad faith filings.
A reverse-WHOIS search for domain names registered to the Respondent, Lisa Katz, reveals over 100 domains, most of which are obvious cybersquatting attempts, and many of which display a nearly identical template used to display a list of links to exploit traffic from confused visitors. Of this list, 67 use the same email, support@domainp.net, as the Complainant, and also use Fabulous.com as the Registrar. The more recent ones registered at GoDaddy are generally for a Lisa S. Katz, an attorney in New York, which may be a different Lisa Katz in spite of showing the same modus operandi in domain name registrations. Thus, only those domains with the same email address as the Complainant will be considered below. The relevant examples of other domains registered by Lisa Katz via Fabulous.com include:
· aaplestore.com, apparently designed to capture traffic from those who misspell “apple” or begin typing Apple’s stock ticker, AAPL, in seeking applestore.com. The site provides five large links for Apple and Macintosh products.
· acadeysports.com, obviously designed to capture confused customers looking for Academy Sports (academysports.com), a famous sports store.
· alletate.com, obviously designed to capture those looking for the famed insurance company, AllState.
· chaseoneline.com, a site apparently designed to capture traffic from those seeking for Chase Bank’s “Chase Online” service.
· georgebrazil.com, a site that takes advantage of an established air conditioning and plumbing company in California and Arizona, George Brazil, which has been in business since 1955 but failed to register their domain name before Lisa Katz took it. Now the legitimate business operates with domains such as GeorgeBrazilService.com and GeorgeBrazil.net, while Katz’s illegitimate site merely offers links to air conditioning and HVAC services, for example. The modus operandi regarding George Brazil’s well known services is similar to Complainant’s actions with respect to the Mormanity blog.
· tripadavisor.com, clearly exploiting the legitimate TripAdvisor.com.
Thus, the Complainant has an established track record of bad faith registrations aimed at creating gain by exploiting confusion regarding a website. What she has done to George Brazil and other legitimate businesses, organizations and services is similar to what she has done to me and the Mormanity blog. The $4,000 fee demanded to sell her undeveloped site is likely the price she demands of others whose marks were snatched.
3. Lisa Katz was the owner of numerous other domains that have been transferred in other UDRP cases, showing a pattern of questionable registration.
A search at the ADR Forum, http://www.adrforum.com/SearchDecisions, for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer. These cases include EarLens Corporation v. Lisa Katz / Domain Protection LLC, Claim Number FA1510001643578, and the previously mentioned Lincoln Electric Company v. Lisa Katz / Domain Protection LLC, Claim Number: FA1509001640294, http://www.adrforum.com/domaindecisions/1640294.htm.
At WIPO, there are 28 cases involving Lisa Katz based on a search for her name in the title at http://www.wipo.int/amc/en/domains/statistics/filing_party.jsp. A sampling of these cases indicated that the majority resulted in transfer.
As just one example, a WIPO decision has been entered against Lisa Katz for actions remarkably similar to those taken against Mormanity. See the case involving the domain name GeicoRewards.com in WIPO Domain Name Decision D2016-1275, http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1275. This case, like many others involving Lisa Katz, provides evidence of Respondent’s bad faith actions. An excerpt from the decision follows:
There is no evidence that the Respondent, who has failed to respond to the Complaint, used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the evidence shows that the Domain Name has been used to resolve to various websites, including at least one with click through links to insurance services of the Complainant and its competitors.
This use of the Domain Name by the Respondent does not demonstrate any right or legitimate interest in the Domain Name and does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Eli L. Lilly and Company v. URDMC, LLC, WIPO Case No. D2011-0715 (respondent’s use of the disputed domain name for a parking website, which advertised goods and services of the complainant and third parties that were competitive with those of the complainant, did not establish rights or legitimate interests); Groupon Inc. v. Xiangsheng Zhou, feng zhou, WIPO Case No. D2014-1609 (use of domain names confusingly similar to complainant’s well-known mark to point to websites from which advertising income is presumably derived does not amount to a bona fide offering of goods and services nor a legitimate or noncommercial fair use).
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy….
As discussed above, at least one of the websites to which the Domain Name resolves includes apparent “pay-per-click” hyperlinks to the goods and services of the Complainant and its competitors. The redirection of Internet users to a website which provides for pay-per-click links that refer to services competitive to the trademark owner is evidence of bad faith registration and use. Comerica Bank v. Isaac Goldstein, WIPO Case No. D2015-1997.
The fact that the Respondent is also known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is a further indication of the Respondent’s bad faith registration and use of the Domain Name in the instant case. The Panel’s search of previous UDRP cases showed 18 decisions against this Respondent finding bad faith registration of third party trademarks and ordering transfer or cancellation of the domain names in question. See, e.g., Blue Grass Automotive, Inc. dba Blue Grass Motorsport v. Domain Hostmaster, Customer ID: 03313550483336 / Lisa Katz, Domain Protection LLC, WIPO Case No. D2015-1511 (finding that the respondent is a serial cybersquatter); Comisión Federal de Electricidad v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC, WIPO Case No. D2015-2303 (noting the 18 domain name awards against the respondent).
The Panel finds that the Complainant has established the Respondent’s bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under paragraph 4(a)(iii) of the Policy.
Mormanity.com will frequently redirect to Searchnet.net and provide nothing more than links to ads. Other times it will display a common ad-based template with Mormon- themes ads listed. Again, there is no sign of a legitimate business behind the name.
4. In response to being notified of my trademark, the defendant requested an exorbitant sum to transfer the domain, typical of bad faith filings.
I have contacted the owner at Support@DomainP.net to explain that I have a trademark and would like to arrange for transfer of the domain. She asked for over $4,000 for the domain, claiming it is a public service site that has been defended in Federal litigation at a cost of over $4000, which I believe is a deceptive claim without merit. Asking for thousands of dollars (often just below the typical cost of an attorney-assisted UDRP action) for transfer of a domain name, when the out-of-pocket costs are obviously minimal (the site is no more than a widely used template for ads, similar to many other sites owned by the defendant) is a telltale sign of a typical cyber squatter scam, i.e., a bad-faith registration.
Support for the questionable nature of the Mormanity.com site is shown in multiple screenshots previously discussed. Accessing the domain often results in apparent bidding between ad providers as the URL often cycles through a variety of ad services. Accessed via computer, more offensive porn or more aggressive popups or loud, noisy alarms have been experienced in the past.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Panel directed Complainant to answer the following questions:
1. Complainant in this matter is Jeffrey Dean Lindsay.
2. Jeffrey Dean Lindsay claims to own the Mormanity trademark.
3. The trademark registration with the USPTO shows the mark was registered to Planet Lindsey, LLC. There is no evidence of record to show the mark was assigned to Jeffrey Dean Lindsay.
4. Explain the relationship between Jeffrey Dean Lindsay and Planet Lindsey, LLC (if there is one) and by what authority Jeffrey Dean Lindsay brings this complaint.
5. Explain why Complainant believes Respondent specifically targeted Complainant on November 29, 2005 when the <mormanity.com> domain name was registered, even though the Mormanity trademark was not registered on May 3, 2016.
and have the responses (with any supporting documentation) e-mailed to the Forum and Respondent no later than July 2, 2018.
C. Additional Submissions
Complainant submitted the following additional information:
In points #1 through #4 of the Order, I was asked to explain my relationship to Planet Lindsay, LLC and my right to the trademark. I am the owner and president of Planet Lindsay, LLC. As shown in the TSDR, the correspondence address for the trademark owner is 20 Diane Lane, Appleton, WI, which is my home in Wisconsin, and the correspondence email is jeff@jefflindsay.com, which is my personal email. Planet Lindsay LLC is a Wisconsin LLC, entity #P050033, which has a Federal EIN of XX-XXXXXXX. My relationship to my LLC is recorded by the State of Wisconsin at the following URL, for which a PDF view is attached: https://www.wdfi.org/apps/CorpSearch/Details.aspx?entityID=P050033&hash=7763815 11&searchFunctionID=f60df7eb-0bc3-46b7-86cb- 91b66102cb6c&type=Simple&q=planet+lindsay
A screenshot is also shown here:
Thus, I have full authority to take actions regarding the Mormanity trademark.
A further issue raised in the Order is the requirement to “explain why the Complainant believes Respondent specifically targeted Complainant on November 29, 2005 when the <mormanity.com > domain name was registered, even though the Mormanity trademark was not registered on May 3, 2016.”
Complainant respectfully notes that my common law rights to the coined name “Mormanity” began with my commercial use in 2004, with steady use ever since, which rights were later perfected by obtaining a trademark. Issues pointing to Respondent’s targeting of my mark and of bad faith registration of the domain include the following:
i. Mormanity is a unique coined name that was not in commercial use prior to the establishment of my Mormanity blog. As documented in the Complaint, before the domain was registered it had become well known among LDS bloggers as an LDS (Mormon)-themed blog (though it also addresses a variety of social and educational issues with use by people outside the LDS faith as well).
ii. The name is not found in dictionaries nor is there any use of meaning associated with the name, as far as I am aware, apart from the Mormon-themed meanings that derive from my various uses of the mark on my blog, at JeffLindsay.com, in guest articles on other blogs and publications, etc.
iii. As a distinctive coined name, it is highly improbable that Respondent independently coined the same name shortly after Mormanity became known in religious and other circles.
iv. Respondent has a track record of filing bad-faith registrations that target known marks and names. As documented in the Complaint, this includes domains such as “Tripadavisor.com” clearly targeting the TripAdvisor mark and GeicoRewards.com, targeting the Geico mark. There are many dozens of such questionable domains registered by Respondent, generally showing similar patterns (see Annex items #22 and #23).
v. Like other bad-faith registrations by Respondent, Mormanity.com is a site that is undeveloped, apparently just a landing page with a list of links that redirect to various commercial ads. There is no sign of any original content or development apart from classic bad-faith squatting of a domain to profit from links to ads. It shows no commercial or creative interest in the Mormanity theme apart from apparently for-pay hyperlinks. These links frequently involve Mormon-themed terms.
vi. Since there is no evidence that the Respondent has any involvement with the Mormon faith or any other website among numerous registered domains showing interest in the LDS/Mormon faith, and since Mormanity.com does nothing more than provide links apparently for pay based largely on use of Mormon-related terms, this shows apparent awareness and targeting of my mark. The business model being followed is typical of bad-faith registrants and typical of Respondent’s many other domains, which involve exploiting a known mark to capture pay for clicks from presumably confused visitors.
vii. The failure of Respondent to rebut the Complaint or to offer any evidence in support of genuine interests in the Mormanity mark support the presumption that this is a classic bad faith registration targeting the Mormanity mark for gain.
viii. If “Mormanity” were somehow later independently coined by the Respondent, it could theoretically have a variety of meanings and purposes, such as derivation from the word “More” or “Moorish” or the names “Morman” (a rare surname) or “Morton” or “Morgridge,” etc. But none of these alternate possibilities appear to be targeted or plausible. The focus of the links provided on the lone landing page at Mormanity.com has been Mormon/LDS themes, showing an awareness of and targeting of the mark I created. The text used for the links often includes references to Mormons, Mormonism, Mormon Church, LDS, and related religious themes, including LDS clothing (garments), LDS weddings, LDS Church materials, etc. Coming up with the same coined term and also targeting the specific range of meanings used by Complainant, when other meanings are possible, further strengthens the presumption that Respondent has knowingly targeted the Mormanity mark after its use for Mormon-themed purposes became known.
ix. Key evidence of the bad-faith intent of Respondent is the offer to sell the domain to me for $4,010, with the absurd claim that this amount is her out-of- pocket expenses for this undeveloped site.
x. Because Mormanity.com uses a name that is identical to my mark, apart from the “.com,” and because the apparently for-pay hyperlinks often target those looking for Mormon-themed content, there is substantial likelihood of confusion and interference with my rights to use my coined name on the Internet. Someone looking for the Mormanity blog could easily go to Mormanity.com and be misled by the Mormon-themed presentation of links. All fact patterns point to class “cybersquatter” behavior aimed at exploiting interest in my mark rather than showing any kind of legitimate business interest in the Mormanity name.
xi. The coined Mormanity name was obviously connected to Complainant and Mormon-themed content. Registration by anyone other than Complainant and use of this coined term for Mormon themed ads inevitably creates confusion, interferes with Complainant’s rights, and suggests “opportunistic bad faith.” See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) and Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression...").
Thus, Respondent shows no legitimate interest in nor rights to the Mormanity mark, and shows every evidence of having become aware of my mark and its use as a Mormon-themed mark with potential value for Mormon-related ads, and thus targeted it for gain, contributing to confusion among and exploitation of readers seeking the original Mormanity blog and author of Mormanity, thereby hindering my ability to effectively control and use my mark on the Internet.
Complainant respectfully refers to the UDRP Complaint, especially Section 7, “FACTUAL AND LEGAL GROUNDS,” and the Annex for further supporting documentation on the clearly bad-faith registration or Mormanity.com. Therein is abundant evidence that my specific use of a unique coined term was targeted for the same Mormon-themed purposed by a respondent already infamous for bad faith registrations and clearly having no legitimate interest in the Mormanity name.
(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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights to the MORMANITY mark through a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,949,676 registered May 3, 2016). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See 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)). In this case, the mark is registered to Planet Lindsay, LLC, which is a different person from Complainant. In light of Complainant’s explanation, the fact Complainant is proceeding pro se and Respondent did not object, this Panel finds Complainant is the alter ego of Planet Lindsay, LLC. Therefore, Complainant has rights to the MORMANITY mark under Policy ¶4(a)(i) from the date of registration (May 3, 2016).
Complainant claims common law rights to the MORMANITY mark. Common law rights to a mark may be demonstrated by evidence of a secondary meaning under Policy ¶4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). The following evidence supports finding a secondary meaning in the MORMANITY mark (a fanciful trademark):
· “The MORMANITY mark has been in steady commercial use since 2004 (first used in commerce May 28, 2004).”
· “Commercial use began on the LDS-themed blog, Mormanity at Mormanity.blogspot.com and at JeffLindsay.com in 2004 as well, and later on other religious-themed sites later such as Orson Scott Card’s NauvooTimes.com.”
· “The Mormanity blog has commercial aspects involving promotion of Mormon-themed and religious-themed services and products such as books, websites, etc., and also provides links to pages at JeffLindsay.com with Google ads, etc.”
· Complainant’s Mormanity blog was cited on many LDS sites.
The test is not whether or not the Panel has heard of the mark. Based upon this uncontroverted evidence, the Panel finds Complainant has common law rights to the MORMANITY mark under Policy ¶4(a)(i) since May 28, 2004.
Complainant claims Respondent’s <mormanity.com> domain name is identical to its mark. Respondent incorporates the entire MORMANITY mark in the domain name. Panels have found domain names to be identical to a mark where the domain name incorporates an entire mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶4(a)(i).
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 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”).
Complainant claims “Respondent is not known for any association with Mormon topics, Mormon-related business or the Mormon faith, and does not appear to have any legitimate business related to the mark ‘Mormanity’ apart from providing parking pages with ads. [Further,] [a] search of WHOIS information shows no connection of Lisa Katz to any such legitimate interest.” Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The WHOIS information which lists the registrant as “Domain Hostmaster, Customer ID : 68383255133963.” This has no obvious relationship to the disputed domain name. Respondent is not commonly known by the disputed domain name per Policy ¶4(c)(ii).
Complainant claims Respondent does not use the <mormanity.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). A parked domain name providing ads is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (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.”). Respondent’s disputed domain name is nothing more than a dynamic parking page providing “pay-to-click” ads unrelated to Complainant. Respondent’s disputed domain name is not being used in accordance with Policy ¶¶4(c)(i) and (iii).
The disputed domain name was registered using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the domain name. This means Respondent has acquired no rights by simply registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the <mormanity.com> domain name in bad faith because Respondent attempted to sell the domain name for over $4,000 to Complainant. Panels have found bad faith registration and use where a respondent attempts to sell a disputed domain name to a complainant for an amount greater than the out-of-pocket costs of registration. See Rackspace US, Inc. v. Russell Harrower, FA1411001592005 (Forum Jan. 5, 2014) (“The Panel concurs with this line of reasoning, which is complemented by Respondent’s prompot[sic] offer to sell the domain name to the Complainant within hours of the registration for the amount of $5000 USD. This allows for a finding of bad faith under Policy ¶4(b)(i), as it is more likely than not that Respondent understood that it could benefit from the resale of a domain name that is identical with the Complainant’s trademark.”). Complainant provided a copy of an email showing Respondent’s demand for over $4,000 to transfer the disputed domain name to Complainant (citing unspecified litigation related expenses regarding the domain name). Respondent registered the disputed domain name on November 29, 2005, after Complainant began using its mark on May 28, 2004. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent registered and used the <mormanity.com> domain name in bad faith because Respondent is engaged in a pattern of bad faith registration. Policy ¶4(b)(ii) provides bad faith will be found when: “[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;.” Complainant has not been able to reflect Complainant’s registered mark in a domain name. A pattern of bad faith registration may evidence bad faith registration and use where a respondent has prior UDRP proceedings that resulted in findings of bad faith and transfer; and/or if Respondent holds domain names which infringe on other famous marks. 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)); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains. “Of this list, 67 use the same email, support@domainp.net, as the Complainant.” A search at the ADR Forum, http://www.adrforum.com/SearchDecisions, for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer (one was denied and one was withdrawn). Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(ii).
Complainant claims Respondent registered and used the <mormanity.com> domain name in bad faith because the website associated with the domain name is a dynamic parking page with consisting solely of “pay-to-click” links. Such use of a domain name indicates bad faith under Policy ¶4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Respondent registered and used the disputed domain name in bad faith per Policy ¶4(b)(iv).
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has made no attempt to rebut this presumption. Therefore, the Panel also finds bad faith on this ground.
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 <mormanity.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 3, 2018
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