IMDB.COM, INC. v. Pham Van Tuyen
Claim Number: FA1809001805841
Complainant is IMDB.COM, INC. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Pham Van Tuyen (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imdbapi.net>, (“Domain Name”) registered with P.A. Viet Nam Company Limited.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2018; the Forum received payment on September 13, 2018.
On September 17, 2018, P.A. Viet Nam Company Limited confirmed by e-mail to the Forum that the <imdbapi.net> Domain Name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the name. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@imdbapi.net. Also on September 17, 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.
On September 18, 2018 Respondent sent a short e-mail communication to the Forum. No further Response was provided.
On October 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, IMDB.COM, INC. operates the <imdb.com> website, a popular and authoritative source for movie, TV and celebrity content. Complainant uses its IMDB mark and related IMDB logo to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,609,882, registered Aug. 20, 2002). Respondent’s <imdbapi.net> Domain Name is confusingly similar to Complainant’s IMDB mark as it merely adds the term “API” and the generic top-level domain (“gTLD”) “.net.”
Respondent does not have rights or legitimate interests in the <imdbapi.net> Domain Name. Complainant has not licensed or otherwise authorized Respondent to use its IMDB mark in any fashion. Respondent is also not commonly known by the Domain Name as the WHOIS information of record lists “Pham Van Tuyen” as the registrant. Respondent is not using the <imdbapi.net> Domain Name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to pass off as Complainant by resolving to a website that features Complainant’s mark and offers competing services.
Respondent registered and is using the Domain Name in bad faith. Respondent attempts to disrupt Complainant’s business and create confusion with Complainant’s mark for Respondent’s commercial gain by resolving to a competing website. Further, Respondent registered the Domain Name with full knowledge of Complainant’s rights in the IMDB mark.
B. Respondent
Respondent failed to submit a Formal Response in this proceeding. Respondent’s communication in its entirety consists of the following:
“Hello.
I am Tuyen. Domain imdbapi.net owned by me.
I made this website for share IMDB movies info and my intention is nonprofit.
I don't know what i need change on my website or anything i need to do.
I can close this website but please consider to my intention.
Thank you.”
Complainant holds trademark rights for the IMDB mark. The Domain Name is confusingly similar to Complainant’s IMDB mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <imdbapi.net> Domain Name and that Respondent registered and uses the Domain Name 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 formal 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).
The Language of the Registration Agreement in this case is Vietnamese. The Complainant, pursuant to UDRP Rule 11(a) has requested that the language of the Proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
In the present case, the Panel decides that the language of the proceeding should be English. The website to which the Domain Name resolves to is in the English language, as has the communication made by the Respondent in this Proceeding. As such, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence exists to suggest the likely possibility that the Respondent is conversant and proficient in the English language.
Complainant has rights in the IMDB mark based upon its registration with the USPTO. Registration with USPTO is 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)).
The Panel finds that the <imdbapi.net> Domain Name is confusingly similar to Complainant’s IMDB mark as it merely adds the descriptive acronym “api” (short for application programming interface, a series of tools for building software) and the gTLD “.com.” The addition of a generic term and a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). See also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the IMDB mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Pham Van Tuyen” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The website to which the Domain Name resolves to (“Respondent’s Website”) features Complainant’s IMDB logo, purports to offer a movie database in direct competition to Complainant and solicits donations/fees for service. It is likely to confuse visitors as it suggests that the Respondent’s Website may have an affiliation with Complainant. Under Policy ¶¶ 4(c)(i) or (iii), use of a domain name to pass off as a complainant may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent had actual knowledge of Complainant’s IMDB mark since the Respondent’s Website purports to provide services in direct competition with Complainant and uses Complainant’s IMDB Logo. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s IMDB Mark for commercial gain by using the Domain Name to resolve to a website featuring the IMDB Mark, the IMDB logo and offering competing services for profit. Under Policy ¶¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or create confusion with a complainant’s mark for commercial gain may evidence bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied 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 <imdbapi.net> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 12, 2018
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