ESPN, INC. v. Hehe Streams
Claim Number: FA1810001812319
Complainant is ESPN, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Hehe Streams (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insider2text.xyz>, registered with NameCheap, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2018; the Forum received payment on October 17, 2018.
On October 19, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <insider2text.xyz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@insider2text.xyz. Also on October 26, 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 November 20, 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, ESPN, INC., owns the INSIDER paid subscription services that provides its’ members with exclusive content such as articles, statistics, news, and fantasy sports commercials. Such content is not made available for free to the general public. Complainant has common law rights in the mark based upon its use thereof for over 20 years in commerce. Respondent’s <insider2text.xyz> domain name, registered on May 17, 2016, is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus the descriptive phrase “2 text” and the “.xyz” gTLD.
Respondent lacks rights and legitimate interests in the <insider2text.xyz> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant’s to use the mark. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to compete with Complainant’s business by offering unauthorized distribution of Complainant’s materials. Visitors to Respondent’s website may input the URL of copyrighted content that exists on the Complainant’s www.espn.com/insider/ or insider.espn.com websites. Respondent’s website then displays the content on its <inider2text.xyz> website.
Respondent registered and uses the <insider2text.xyz> domain name in bad faith because it attempts to operate a website that contains Complainant’s copyrighted content. Furthermore, Respondent failed to respond to Complainant’s cease-and-desist letters. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
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 same 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 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 asserts common law trademark rights in the INSIDER mark based upon its establishment of secondary meaning of the mark. Common law trademark rights are regularly accepted to support a claim under the Policy. See, e.g., Nutrien Ltd. v. pache pache / wizzie wizzie / Technical Support / samantha anderson / Coke / byrd building service / brd, FA 1812162 (Forum Nov. 13, 2018) (“Although complainants more frequently demonstrate their rights in a mark by reference to registration of the mark with a national or international trademark authority, common law rights in a mark are also recognized under the Policy.”) This is particularly so where the Complainant is based in, and operates in the United States of America which, as a common law jurisdiction, recognizes unregistered trademark rights gained through use and public recognition. Secondary meaning of the INSIDER mark, and thus common-law trademark rights for purposes of Policy ¶ 4(a)(i), can be established through Complainant’s longstanding use of the mark in commerce accompanied by media recognition under. See Marquette Golf Club v. Al Perkins, FA 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.”). Complainant argues it has provided its’ members with the INSIDER subscription service for over twenty years and submits multiple articles regarding the media recognition of the INSIDER services. Accordingly, in conducting a threshold analysis under Policy ¶ 4(a)(i) the Panel concludes that Complainant’s mark has established a secondary meaning and that Complainant owns common law rights in the mark.
Next, Complainant alleges that Respondent’s <insider2text.xyz> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire INSIDER mark in the disputed domain name plus a descriptive phrase and a gTLD. The addition of a descriptive term and a gTLD to a mark may not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). Here, Respondent includes the INSIDER mark in the disputed domain name plus the descriptive phrase “2 text” and the “xyz” gTLD. Of course, it is well settled that generic top-level domains are usually disregarded for purposes of the confusion analysis as, under most circumstances, they are merely functional and add no substantive meaning to the entire domain name. See, e.g., David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the gTLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”).
Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 argues that Respondent has no rights or legitimate interests in the <insider2text.xyz> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INSIDER mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <insider2text.xyz> domain name identifies the registrant as “Hehe Streams” and no presented evidence indicates that Respondent is known otherwise or was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <insider2text.xyz> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <insider2text.xyz> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website whose goal is to violate Complainant’s intellectual property rights and draw away customers. Specifically, Complainant contends that the domain name resolves to a website that allows users to illegally access Complainant’s copyrighted material by inputting a URL that exists only on Complainant’s own website and is typically accessible only to its subscribers who have paid for such exclusive content. Complainant further argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. Such use draws customers away from the Complainant and is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See National Academy of Recording Arts & Sciences, Inc. v. FAHIM RAHMAN, FA 1744642 (Forum Sept. 13, 2017) (“Respondent’s uses the at-issue domain name to address a website promoting an unauthorized streaming service whereby internet users may watch the Grammy Awards when televised by Complainant. Using the domain name in this manner, to commandeer Complainant’s intellectual property, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the <grammyawards-live.com> domain name under Policy ¶ 4(c)(iii).”); FUNimation Entertainment v. VerionMedia / Hicham Derion, FA 1340440 (Forum Oct. 15, 2010) (“The Respondent’s links to unauthorized distributions of Complainant’s animated series potentially competes with Complainant’s distribution of the series and therefore does not comport with Policy ¶ 4(c)(i) or ¶ 4(c)(iii).”) Here, the Respondent’s use of the <insider2text.xyz> domain name to offer a service that circumvents the Complainant’s restricted access to its copyrighted material does not create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or constitute a legitimate noncommercial or fair use of the domain name under ¶ 4(c)(iii).
The Panel therefore determines that Respondent does not have rights or legitimate interests in the <insider2text.xyz> domain name.
Complainant contends that in light of the notoriety of Complainant's INSIDER mark, it is inconceivable that Respondent could have registered the <insider2text.xyz> domain name without actual knowledge of Complainant's rights in the mark. Actual knowledge of a complainant's rights in its trademark prior to registering a disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain name to allow users to circumvent Complainant’s paywall to access Complainant’s exclusive copyrighted materials indicates that it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the INSIDER mark and thus registered the disputed domain name in bad faith.
Complainant claims that Respondent’s use of the <insider2text.xyz> domain name to pass itself off as Complainant in order to divert customers and compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”) Further, Complainant has submitted evidence showing that the disputed domain name resolves to a website that allows users to illegally access Complainant’s copyrighted material that is made available exclusively to its paying subscribers and not for free to the general public. Complainant argues that users can utilize Respondent’s website at the confusingly similar <insider2text.xyz> domain name to access Complainant’s content by circumventing the paywall or subscription service. This diversion of customers, and thus revenue, away from Complainant evidences competition in bad faith and based upon confusion with its INSIDER trademark. Multi Media, LLC v. Vlad Lupu, FA 1766337 (Forum Feb. 19, 2018) (“Complainant asserts that users arriving at Respondent’s website may believe they have arrived at Complainant’s site, or simply remain on Respondent’s site since it offers services which can purportedly allow users to illegally access paid services on Complainant’s site. The Panel agrees and finds Respondent registered and/or used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).”) The Panel therefore finds that Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, although there is sufficient evidence to support a finding of bad faith in this case, Complainant points out that the Respondent failed to reply to its cease-and-desist letters that were sent in an attempt to avoid the need for this UDRP case. Prior UDRP Panels have held that failure to respond to a cease and desist letter may further support an inference of bad faith. Guccio Gucci S.p.A. v. Smith Davilv, D2012-0052 (WIPO March 6, 2012); Bayerische Motoren Werke AG v. (This Domain is For Sale); Boehringer Ingelheim International GmbH v. RODRIGO QUEZADA ZAMBRANO, 102088 (CAC August 20, 2018) (“the failure to reply to cease-and-desist letters constitute[s] evidence of bad faith.”)
The Panel therefore determines that Respondent registered and uses the <insider2text.xyz> domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insider2text.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 23, 2018
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