Wiluna Holdings, LLC v. Zhichao Yang
Claim Number: FA1809001804964
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 NAME
The domain name at issue is <clips4slae.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 6, 2018; the Forum received payment on September 6, 2018.
On September 7, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <clips4slae.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 September 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@clips4slae.com. Also on September 7, 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 September 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Wiluna Holdings, LLC., owns and operates a website featuring adult-entertainment oriented media. Complainant uses the CLIPS4SALE.COM, CLIP4, and CLIPS4 marks to provide and market its products and services. Complainant claims rights in the marks based upon extensive use thereof, dating back to 2003, as well as registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <clips4slae.com> domain name, which was created on January 19, 2018, is confusingly similar to the marks as the name contains Complainant’s CLIPS4SALE.COM mark in its entirety, merely transposing the letters “A” and “L”.
Respondent does not have rights or legitimate interests in the <clips4slae.com> domain name. Respondent is not permitted or licensed to use Complainant’s CLIPS4SALE.COM mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <clips4slae.com> domain name to divert Internet users to Respondent’s website where Respondent hosts pay-per-click advertisements which compete directly with Complainant’s business.
Respondent has registered and used the <clips4slae.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract users, for commercial gain, to the disputed domain name which features click-through advertisements to third party websites that compete with Complainant. Moreover, Respondent engages in typosquatting by transposing the letters “A” and “L” in the CLIPS4SALE.COM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 Jul. 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 in the CLIPS4SALE.COM, CLIP4, and CLIPS4 marks based upon its extensive use thereof as well as its registration of such marks with the USPTO. Registration of a trademark with the USPTO is, alone, sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). 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)). Complainant provides copies of its USPTO registration certificates for its claimed marks. Therefore, the Panel finds that Complainant has rights in the CLIPS4SALE.COM, CLIP4, and CLIPS4 marks per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <clips4slae.com> domain name is confusingly similar to its marks as the name contains the marks in their entirety, merely transposing the letters “A” and “L”. Misspelling of a complainant’s mark, either by adding, removing, or transposing letters, does not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Here, the Panel notes that the transposition of two letters in Complainant’s mark suggests that the Respondent chose the spelling of the <clips4slae.com> domain name with the expectation that users would accidentally mistype the mark when trying to reach the Complainant’s CLIPS4SALE.COM website. As such, and in light of the very minor difference between the Respondent’s domain name and the Complainant’s marks, the Panel agrees with Complainant and finds that the <clips4slae.com> domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
It is well established in UDRP cases that a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this endeavor, the burden then shifts to the 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”).
Complainant contends that Respondent is not licensed or permitted to use Complainant’s CLIPS4SALE.COM, CLIPS4, or CLIP4 marks and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information supports a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to use a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information of record identifies Respondent as “Zhichao Yang.” The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the disputed domain name.
Further, Complainant argues that Respondent has no rights or legitimate interests in the <clips4slae.com> domain name as Respondent fails to use the <clips4slae.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent uses the disputed domain name to host a parked webpage that contains links to third party websites that compete with Complainant’s business. Use of a domain name to host a parked webpage that contain third party links to Complainant’s competitors may not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum Jul. 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots of the disputed domain name’s resolving website which shows multiple links to third-party websites that offer adult images and video content that very closely relate to Complainant’s business. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
In light of the above, the Panel finds that Respondent does not have any rights or legitimate interests in the <clips4slae.com> domain name under Policy ¶ 4(a)(ii).
Complainant claims that the Respondent registered and uses the <clips4slae.com> domain name in bad faith. It is noted, above, that the Complainant had established rights in its CLIPS4SALE.COM, CLIPS4, and CLIP4 trademarks prior to the creation of the disputed domain name. It is also apparent, from the nature of the <clips4slae.com> domain name and the content of its resolving pay-per-click website, that the Respondent was on actual notice of these marks at the time it registered the domain name. True Value Company, L.L.C. v. Paul Skulitz / True Value, FA1807001798403 (Forum Aug. 17, 2018) (use of the domain name <truevaluesavings.com> “to promote competing products which are not connected with Complainant … indicates that Respondent was aware of the significance of the TRUE VALUE name and Complainant’s rights at the time of registration.”)
Next, Complainant claims Respondent attempts to disrupt Complainant’s business and attract users, for commercial gain, to the disputed domain name’s website which features click-through advertisements that redirect users to Complainant’s competitors. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, monetized links can support a finding of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Here, Complainant contends that Respondent’s typosquatting of the disputed domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims that Respondent hosts links to third party websites that relate to Complainant’s business for the purpose of generating click-through advertisement revenue. Complainant provides a screenshot of Respondent’s website that resolves from the domain name to support its allegations. In light of this evidence, and in the absence of any evidence, arguments, or response from the Respondent, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to both Policy ¶¶ 4(b)(iii) and (iv).
Finally, the Complainant contends Respondent engages in typosquatting. The intentional misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, in creating the <clips4slae.com> domain name Respondent merely transposes the letters “A” and “L” in the CLIPS4SALE.COM mark. Thus, the Panel agrees with the Complainant and finds that Respondent’s misspelling of Complainant’s marks constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
In light of the above, and in the absence of any evidence, arguments, or response from the Respondent, the Panel finds that Respondent registered and uses the <clips4slae.com> domain name in bad faith 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 <clips4slae.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 1, 2018
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